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1
A TEXTBOOK
OF
INTELLECTUAL ROPERTY
RIGHTS
Dr. M. Geethavani, M. Pharm, Ph.D
Professor & Head Pharmaceuical Chemistry
Mr. Ramakrishna C, M Pharm
2
INTELLECTUAL PROPERTY RIGHTS
IPR is protecting knowledge in the form of legal rights. It is one kind of intangible
property and has commercial value. It is a property raised from the creativity of the
human mind, intellect, and creative ideas.
Property is divided into two types tangible and intangible. Tangible property is
movable like a car and immovable like a building. Intangible means we cannot see but
can feel like intellectual property, which divides into industrial related (patents,
trademarks, designs etc.) and copyright-related
INTRODUCTION
Intellectual property (IP) pertains to any original creation of the human intellect, such
as artistic, literary, technical, or scientific creation. Intellectual property rights (IPR)
refer to the legal rights given to the inventor or creator to protect his invention or
creation for a specific time. These legal rights confer an exclusive right to the
inventor/creator or his assignee to utilize his invention/creation for a given time fully.
It is very well settled that IP plays a vital role in the modern economy. It has also been
conclusively established that the intellectual labour associated with the innovation
should be given due importance so that public good emanates from it. There has been
a quantum jump in research and development (R&D) costs with an associated jump in
investments required for putting new technology in the marketplace. The stakes of the
developers of technology have become very high. Hence, the need to protect the
knowledge from unlawful use has become expedient, at least for a period, that would
ensure recovery of the R&D and other associated costs and adequate profits for
continuous investments in R&D. IPR is a robust tool to protect investments, time,
money, effort invested by the inventor/creator of an IP since it grants the
inventor/creator an exclusive right for a certain time for the use of his
invention/creation. Thus IPR, in this way, aids the economic development of a
country by promoting healthy competition and encouraging industrial development
and economic growth.
Need for IPR
IP protects from infringement and Saves from unauthorized use
IP contributes enormously to our national and state economies.
Many industries across our economy rely on the adequate enforcement of their patent,
trademarks and copyrights, while consumers use IP to ensure they are purchasing
safe, guaranteed products. Without the protection of ideas, businesses and individuals
would not reap the full benefits of their inventions and focus less on research and
development.
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IP accounts for 74% of US exports, which amounts to nearly $ 1 trillion. Substantial
IP rights help consumers make an educated choice about their purchases' safety,
reliability, and effectiveness.
Nearly all the 300 WHO essential drug list that is saving, improving people's lives
around the globe came from the R&D pharmaceutical industry that depends on patent
protection.
Innovative agricultural companies are creating new products to help farmers to
produce more and better products for the world hungry while reducing the
environmental impact of agriculture. IP driven discoveries in alternate energy, green
technologies will help improve energy security and address climate change.
Types of IPR
1.PATENTS
2.TRADE SECRETS
3.COPYRIGHTS
4.TRADEMARKS
5.GEOGRAPHICAL INDICATIONS
6.INDUSTRIAL DESIGNS
7.NEW PLANT VARIETIES (PLANT BREEDER RIGHTS)
8.LAYOUT DESIGNS OF INTEGRATED CIRCUITS (semiconductor chips)
9.TRADITIONAL KNOWLEDGE
10.BIOLOGICAL DIVERSITY
4
These are different categories of IPR
IPRs that do not fit into this classical division are termed sui generis, meaning one-of-
its-kind. Such sui generis rights include those covering layout designs of
semiconductor chips and plant breeders rights.
Sui generis systems
Sui generis is a Latin word. It means uniqueor special, leaving the sui generis system
open to interpretation. Sui generis offers a unique type of intellectual property right
(IPR), which is different from the classical IPR, as is the case with the patent. All sui
generis models that could be tailored to the specific needs and circumstances of the
Members are legally recognized systems. The plant varieties constitute the principal
means of production and growth in agricultural productivity. It is also recognized that
the specific needs and circumstances of agriculture in each country vary. In this
respect, the differences between the developing and the developed countries are
extensive in several aspects. Therefore, it was evident that a sui generis system of
protection appropriate for a developing country may require specific modifications in
another developing country, and these systems may not even be relevant to a
developed country. These differences in ground realities and perceptions have
contributed to the raging controversy on the sui generis system.
The significance of traditional knowledge
Traditional knowledge (TK) is integral to the identity of most local communities. It is
a vital constituent of a community social and physical environment, and, as such, its
preservation is of paramount importance. Attempts to exploit TK for industrial or
commercial benefit can lead to misappropriation and prejudice the interests of its
rightful custodians. In the face of such risks, there is a need to develop ways and
means to protect and nurture TK for sustainable development in line with the interests
of TK holders. The preservation, protection, and promotion of local communities' TK-
based innovations and practices are crucial for developing countries. Their rich
endowment of TK and biodiversity plays a critical role in their health care, food
security, culture, religion, identity, environment, trade, and development. However,
this valuable asset is under threat in many parts of the world. There are concerns that
this knowledge is being used and patented by third parties without the prior informed
consent of TK holders. Few, if any, of the derived benefits are shared with the
communities in which this knowledge originated and existed. Such concerns have
pushed TK to the forefront of the international agenda, triggering a lively debate
about ways to preserve, protect, further develop and sustainably use TK.
Documenting and digitizing TK-related information in the form of a TKDL proves to
be an effective means of preserving TK and preventing its misappropriation by third
parties. India is a pioneer in this field.
Sui Generis Systems in The World
No country has put a sui generis system in place. Most are content using patents and
the International Union for Protection of New Plant Varieties (UPOV) to protect their
genetic resources. Kenya and Malawi are making efforts to establish sui generis
systems. Many other countries have been proactive in the debate attempting to link
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the objectives of Access and Benefit-sharing (ABS) as contained in the Convention on
Biological Diversity (CBD) to Trade-Related Aspects of Intellectual Property Rights
(TRIPS). They are fighting for a modification of TRIPS to allow them to control
access to genetic resources and get some benefits from them.
Situation In India
India has not brought any TK-specific regime, but laws adopted to give effect to its
obligations under the TRIPS, CBD and ITPGRFA have reiterated India‘s stand-in
different intergovernmental bodies working on the protection of TK. India has
adopted three companion legislation on IPRs, plant varieties, and biodiversity: the
Patent‘s (Amendment) Act, 2005 (effective from 1January 2005); the protection of
plant varieties and farmers rights Act, 2001 (PPVFR Act), and the Biological
Diversity Act, 2002. There are linkages between these three pieces of legislation and
some over-lapping. Whereas the Patents Act grants patents on Biotechnology, the
plant variety protection law provides a sui generis regime on plant breeder‘s rights
(PBRs). The Biological Diversity Act provides a mechanism to protect and share
PGRs.
The Patents (Amendment) Act
The Patents (Amendment) Act, 2005 has made Biotechnological processes patentable.
Microorganisms are patentable, but plants and animals in whole or any part thereof,
including seeds, varieties, and species, and essentially biological processes for
propagating plants and animals are not patentable. It incorporates provisions for
protecting biodiversity and traditional knowledge by refusing to grant a patent or
revoking a patent if the application wrongfully mentions the place of origin of the
biological material for the invention. Failure of disclosure is also a ground for
opposition to a patent. Furthermore, an invention that, in effect, is traditional
knowledge or aggregation or duplication of the known properties of the traditionally
known components is non-patentable. However, it is often difficult to check the
unscrupulous patent of TK because of a lack of documentation and validation.
Protection of Plant Varieties and Farmer‘s Rights Act (PPVFR Act), 2001
When India initiated this legislative process in 1993, the first draft appeared to have
more similarities with UPOV 1978 Act. This draft encountered severe opposition and
protest from farmers, nongovernmental organizations led by the Gene Campaign, civil
society, and Parliamentarians. A dialogue on this legislation organized at the
M.S.Swaminathan Research Foundation, Chennai, led to the development of another
draft model incorporating equitable PBR, farmers‘ rights, recognition of farmer as the
cultivator, conserver and breeder with entitlement to protect farmers‘ varieties, new
concepts such as benefit-sharing, creation of national gene fund for promoting
conservation of agro-biodiversity by farmers. Further several interactions with
farmers, NGOs, and other interested parties, the draft bill was modified to suit the
national agricultural scenario with checks and breaks to minimize the monopolistic
role of multinational corporations while encouraging their partnership in plant
breeding. The draft Bill was subsequently referred to a Joint Select Committee of
Parliamentarians headed by Shri. Sahib Singh Varma. The enacted Protection of Plant
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Varieties and Farmers‘ Rights Act, 2001, is notable and distinct from the UPOV Acts
in several respects. It meets all crucial elements to make it an effective sui generis
system of IPR. Some of the features are unique with no parallel in the protection of
plant varieties. For this reason, there is also the possibility that a few of the
ideological features may encounter specific practical difficulties during their
implementation. These problems, however, are not insurmountable with motivated
implementation agencies and willingness for timely review.
The Biological Diversity Act, 2002
This application is more explicit in its approach towards TK. It contains elaborate
provisions on benefit-sharing but is a week about the participation of communities in
decision making. However, no attempt has been made to define TK or Communities.
The main focus of the Act is to regulate access to GR and associated knowledge by
foreign individuals, institutions or companies to secure equitable sharing of benefits
arising out of the use of these resources with the local people. To protect the
knowledge of local communities biodiversity. To address the problem of Bio-Piracy,
the Act has elaborate provisions to grant access to biological resources by non-
resident Indians, foreign individuals, etc., who can obtain any biological resources
occurring in India or knowledge associated with it.
IPR in India – Genesis and development
Intellectual Property Right (IPR) in India was imported from thewest. The history of
IPR in India is distinctly divided into pre-independence and post-independence
phases. The post-independence phase witnessed tremendous changes in the postTRIPs
(WTO) era. The time to time transformation and amendment in IPR laws to ensure the
inventor‘s interest is evident throughout the development of IPRs in India. The Indian
Trade and Merchandise Marks Act 1884 was the 1st Indian Law regarding IPR. The
1st Indian Patent Law was enacted in 1856, followed by a series of Acts being passed.
They are the Indian Patents and Designs Act in 1911 and the Indian Copyright Act in
1914. Indian Trade and Merchandise Marks Act and IndianCopyright Act were
replaced by Trade and Merchandise Marks Act 1958 and Copyright Act 1957. In
1948. The Indian Government appointed the 1st committee to review the prevailing
Patents and Designs legislation. In 1957, the Government appointed Justice
RajagobalaAyyangar Committee (RAC) to revise the Patent Law.
RajagobalaAyyangar Committeesubmitted its report in 1959. The report tried to
balance the constitutional guarantee of economic and social justice enshrined in the
constitution's preamble. This report provided the processfor Patenting of drugs. This
report outlined the policy behind the Indian Patent system.
The theory upon which the patent system is based, i.e., an opportunity to acquire
exclusive rights in an invention, stimulates the technical process in four ways.
1. Encourages research and invention.
2. Induces an inventor to disclose his discoveries.
3. Offers award for the expenses of developing inventions.
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4. Provides an inducement to invest capital in new lines of production which might
not appear probable.
Based on the RajagobalaAyyangar Committee report, a Bill was introduced in 1965,
and the bill was passed in the Lok Sabha. However, it lapsed in the Rajya Sabha and
once again lapsed in Lok Sabha in the year 1966 due to the dissolution of Lok Sabha.
However, it was reintroduced in 1967 and passed in 1970; the draft rules
wereincorporated in Patent Act and passed in 1971.The following steps are being
suggested with particularreference to the situation in India regarding IPR in the
national policymaking
Intellectual Property Rights and its Development in India
Intellectual Property Rights are patents, copyrights, trademarks, geographical
indicators, protection ofundisclosed information, layout designs of integrated circuits,
industrial designs and traditional knowledgerecognized by the Trade-Related
Intellectual Property Rights agreement (TRIPS) and governed by the WTO (World
Trading Organization).
In the present book, development of Intellectual Property Law in India, Evaluation of
an International Intellectual Property Regime, New Dimensions and issues for
resolution, the Importance of IPR in developing countries and its impact are discussed
in brief.
Constitute a single integrated window National IPR commission to deal with IPR
policy issues.
Integrate national technology planning with IPR and trends in the international
technology trade.
Implement a formal national IPR literacy mission.
Set up IPR training institutes to prepare technically qualified attorneys.
Introduce an enabling national taxation policy to encourageinnovation, the building of
IPR portfolio and its utilization intechnology transfer and trade.
Urgently modernize the IPR administrative structures in the country.
Improve infrastructure for access and effective use of IPR information. There is an
urgent need to harmonize the patent.
classification system to ease and optimize processes in patent searching.
Re-structure the judiciary and enforcement machinery for professionals and speedy
response to IPR issues.
Training of corporate and institutional managers on effectivemanagement of IPR.
Standardize models for valuation and audit of IPR.
Evolve national taxation policies of development.
7 objectives of the new IPR Policy, 2016:
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1. To increase public awareness about IPR and their economic, social and cultural benefits.
2. To stimulate the creation of IPR in the country.
3. To create a strong legal and legislative framework around IPR.
4. To modernize administration and management of IPR.
5. To promote commercialization of IPR.
6. To strengthen enforcement and adjudication mechanism around IPR.
7. To expand Human Capital Development.
Key Features of the new IPR Policy, 2016:
1. Broadening the Ambit:The new Policy covers music, films and industrial drawings by
copyright.
2. Process Time Reduction:Reduction in time taken to clear the backlog of IP application
from current 5-7 years to 18 months by March 2018.
Reduction in approval of trademark applications from a current average of 13 months to one
month by 2018.
3. Conflict Resolution:Designate DIPP (Department of Industrial Policy and Promotion) as a
nodal agency for coordination, guidance and regulatory works.
4. Policy Review: To review the policy after every five years in consultation with
stakeholders.
5. Domestic IPR facilitation:To promote Research and Development
Some Essential Examples of IPR
Abduction of turmeric:
Thus, the war began: In May 1995, the US Patent Office granted the University of
Mississippi Medical Center a patent [#5,401,504] to use Turmeric in Wound Healing.
The patent was promptly challenged by Dr R A Mashelkar, an Indian scientist who
has done much to awaken India to Intellectual Property Rights issues. After four
months of submissions, it was established that turmeric as a healing agent was well-
known in India. For some centuries, one is tempted to add. The patent was annulled.
However, there were more battles ahead. In 1996, Vandana Shiva --an icon for Third
World Knowledge Rights began to challenge the patent granted to the firm of
W.R.Grace& Co by the European Patent Office, Munich forfungicidal uses of neem
oil'. Now, it so happens that neem is as much a sacred object in India as turmeric is.
The case of basmati rice patent
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The facts of this case are that in September 1997, Ricetec was granted a patent for
allegedly novel basmati lines and grains which were created from the crossing of the
basmati germplasm (of Pakistani origin) taken from an ex-situ gene bank in the US
with American long-grained variety of rice. Ricetec has claimed that the new varieties
have the same or better aroma, grain length and other characteristics than the original
basmati variety grown in India and Pakistan and can be grown successfully in
specified geographical areas in North America. This came to the notice of the
government of India in February 1998, and an Inter-Ministerial Committee was set up
under the Secretary, Department of Industrial Development, to examine this issue.
The Agricultural Export Development Agency (APEDA) of the Ministry of
Commerce in the government of India has been entrusted with the task of representing
the rice exporters in any re-examination of the patent in the US Patent and
Trademarks Office (USPTO), if it is decided that there are sufficient grounds for the
eventual revocation of the patent.
The Council for Scientific and Industrial Research (CSIR) successfully opposed and
obtained the revocation of a patent on turmeric in 1997 in the USPTO is assisting in
this exercise. In 1996-97, India exported about 490,000 MTs of basmati rice valued at
about $ 358 million, constituting over 60 per cent of the value of India's total exports
of rice. Irrespective of what is decided in the USPTO on revoking the basmati patent,
can Ricetec or any other company use the name basmati to sell rice that does not
originate from India or Pakistan. In other words, can basmati be protected as a
geographical indication? There is no unequivocal answer as Ricetec has claimed that
basmati is a generic name denoting a variety of rice. Moreover, if Ricetec or any other
company sells rice similar to basmati and labels or advertises this as 'American made
basmati type rice' or 'basmati style rice', with a clear indication that the product
originates from the US, there is no deception of the public even while the reputation
and goodwill attached to the name basmati is diluted. The TRIPS Agreement accords
absolute protection against the use of geographical indications with the words 'type',
'style', 'kind' etc., only to wines and spirits and to no other commodity. In addition, if
the Courts in the US finally rule that the name basmati is already generic, as it is
understood to denote a variety of rice not necessarily associated with any
geographical region, there would be no protection available for it. This is not yet
tested in the Courts in the US.
However, APEDA opposes the trademark 'Texmati' by Ricetec in the 20 UK because
it would deceive the consumers as rice originating from India and Pakistan. The UK's
GAFTA strictly enforces its labelling requirements where `basmati' can only be used
for rice originating from India, and Pakistan should help India's case. As of date, the
case has not yet been finally decided in the UK Trademarks Registry. Some have
opined that taking a patent derived from the basmati germplasm amounts to biopiracy
by Ricetec.
However, it must be noted that the germplasm was taken from an ex-situ collection in
the US and that the CBD had skirted the issue of ownership of genetic resources in
international collections. Thus, there is no prohibition on the exchange or use of such
germplasm in the current international law, even if this is for commercial purposes.
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Darjeeling tea case
the unauthorized use and registration of Darjeeling and Darjeeling logo by Japanese
companies already registered in Japan by the tea board of India and unauthorised use
and attempted registration of the words Darjeeling and Darjeeling logo by some other
developed countries like the united states, united kingdom, France Russia. So efforts
made by the tea board to ensure the supply of genuine Darjeeling tea and legal
protection at the domestic level like CTM registration (certification trademarks) for
Darjeeling logo and word Darjeeling under the trademarks act 1999 and GI
registration in India applied by tea board of India in order to provide legal protection
in India. Many hurdles, challenges, settlements, disputes have crossed the tea board of
India in order to protect the word Darjeeling and Darjeeling logo.
IPR CASE BETWEEN INDIA AND USA ON NEEM
Neem is a tropical evergreen tree native to India.It is known as “the village
pharmacy” because of its versatile use for more than 4000 years.Biopiracy is the theft
of genetic materials by the process of patenting.Once patented, the patent owner can
easily prevent competitors from producing the product, occasionally even interfering
with the lifestyles of the community, which is the source of the patented product.In
such cases, farmer and community livelihoods are threatened. The neem campaign
consisted of a group of NGO’s and individuals. This was done to mobilize worldwide
support to protect indigenous knowledge systems.The neem patent became the first
case to challenge US and European patents on the ground of biopiracy.PROBLEM: In
1971, us timber importer Robert Larson observed the tree’s usefulness in India and
began importing neem seeds to Wisconsin. He then conducted safety and performance
tests on it and sold the patent for the product to the MNC, W R Grace and Co. Since
1985, over a dozen US patents have been taken out by the US and Japanese firms on
the formulae for stable neem-based solutions, emulsions, etc. It also began suing
Indian companies for making the emulsion. DISPUTE:The controversy about who has
the right over the neem tree raised may question Indian companies claim that what the
US companies are calling inventions is stealing and pirating the indigenous practices
and knowledge of its people. Even the green party of Europe supported this claim.US,
on the other hand, stated that what they are doing will help the Indian
economy.Another issue is whether the neem tree is patentable because it is a product
of nature. The problem is that W R Grace does not have a patent on the tree but on the
process of making the emulsion. CASE JUDGEMENT: On 30 September 1997EPO
accepted the arguments offered by Indian scientists and rejected the order of the US
patent.The Indian scientists argued that the Indians had known the medicinal
properties of neem for thousands of years, and hence no other company can patent its
properties.The EPO agreed to withdraw the patent in May 2000.The US also needs to
change its laws that allow biopiracy.
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Novartis case
challenging the Indian Patent Office for Denial of its patent application for
GlivecConstitutional validity of section 3(d) of Indian Patent Law,1970
Section 3(d) of the Indian Patent Act– Prevents the Grant of a Patent for New Forms
of Known Substances, Unless It is demonstrated with an Increased Efficacy. Glivec
Patented in 35 countries & Helpful in Chronic Myeloid Leukemia.
Imatinib Mesylatein Beta Crystalline Form.  Restrain Indian Generic Pharmaceutical
Manufacturers from Producing Drugs based on the Compound.  Not Compatible with
the Trade-Related Aspects of Intellectual Property Rights (TRIPS) (Vague). Non-
Uniform Discretionary Power on the patent controller.
Glivec does not Qualify the Test of Inventionas laid down in Section 2(1)(j) and
Section 2(1)(j (a)) of the Indian Patent Act.  Novartis decided to stop any further
Investment in R&D in India.
IPR IN ABROAD
Globalization and the rapid proliferation of technology have elevated the importance
of IPR protection for small and medium enterprises. The intangible nature of the
intellectual property and worldwide lack of standard practices create challenges for
countries businesses wishing to protect their inventions, brands and business methods
in foreign markets
For example, a car might have one hundred patents associated with it in various parts
and components. One patent may be all that needed to cover one product, a patented
drug in the pharmaceutical industry.
Some companies obtain patents to license or sell them to others, making money for
their inventions without manufacturing or service anything. Other companies actively
seek patents that they can purchase because they want to speed up their R&D efforts
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Example: Daimler company which registered 2000 patents in 2009, pays 2600 outside
inventors to use their innovations in Daimler products, so patents are the future of
innovation management.
Filing a patent is relatively inexpensive. Everybody can afford the filing fee, but
defending a patent can be expensive. How overworked the patent examiners and often
errors on granting a patent means there are often overlapping patents. We wind up in
these fights. We cannot tell, courts cannot tell, a patentee cannot tell what they mean.
The US government office of the United States trade representative (USTR) monitors
intellectual property rights worldwide and fights IP theft because IP theft impacts 18
million Americans livelihood depends on IP protection. USTR evaluates countries
and rates them according to how those countries enforce IP rights
The WIPO provides a list of national IP offices and a range of services for businesses
looking to protect their IP internationally. Protecting and managing your IP abroad
can be very complex. If you plan to sell, distribute, manufacture, or source your
products abroad, you should seek help from an IP attorney or professional IP advisor.
According to a world statistical review, China, America, Japan has strong GDP and
R&D and they primary patent filers. In 2007, 59.2% of patents were filed in these
three countries.
In 2007 3.3 million trademark applications are filed across the world, and significant
filers are IP offices of china and the united states of America. In 2007 the worldwide
industrial design application filed was 621000 applications among 43.1% applications
filed by China's IP offices.
The patent applications filed through the Patent Cooperation Treaty (PCT) in 2008
were approximately 163,600.Globally some companies are topped like Huawei
Technology (China), Panasonic Corporation (Japan) and Philips (Netherlands) were
ranked first,second and third in patent and PCT filings.
In university sector. The University of California filed 345 PCT applications. Tokyo,
Seoul National, Imperial College and Osaka are the four non-US universities in the
top 20 list.
China, Germany, Japan, the Republic of Korea and the US accounted for around 70%
of world R&D expenditure, and these countries are the top five ranked countries for
resident patent filings.
If we talk about the comparison of India and China, Domestic applicants file actively
in China: 62 percent in China whereas 20 percent in India. Bigger Economy in China
in comparison to India.Better Infrastructure for Patent filing in China. Better IP
awareness among individuals and Universities. Easy to get a grant in China. Better
enforcement of IP Laws in China.
China to be the leading country with the highest number of Patents filed in 2019,
followed by the USA. China also leads in the number of Trademarks filed. India is
ranked 10th globally in the number of Patents filed and 8th in terms of
trademarks.
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Guang Dong Oppo Mobile (1,927), Boe Technology (1,864), Ericsson (1,698), Ping
An Technology (1,691), Robert Bosch Corporation (1,687) and LG Electronics
(1,646). The list is based on applications filed through the WIPO’s Patent Cooperation
Treaty (PCT) system. India fares in applying for trademarks as well, having made up
for just 0.7% of global filings in 2019, the WIPO data showed. The country is nearly
absent in industrial designs, having filed for only three designs, against 21,807
globally. India’s R&D spending remained constant at around 0.6-0.7% of its GDP,
way below the expenditure level of countries like Israel (4.3%), South Korea (4.2%),
the US (2.8%) and China (2.1%). Developing countries have fewer patents,
trademarks, and industrial designs due to inadequate R&D and a lack of awareness
about the importance of filing such applications.
INTERNATIONAL ORGANIZATIONS, AGENCIES AND TREATIES
Some several international organizations and agencies promote the use and protection
of intellectual property. Although these organizations are discussed in more detail in
the chapters to follow, a brief introduction may be helpful:
International Trademark Association (INTA) is a not-for-profit international
association composed chiefly of trademark owners and practitioners. It is a global
association. Trademark owners and professionals dedicated in supporting trademarks
and related IP in order to protect consumers and to promote fair and effective
commerce. More than 4000 (Present 6500 member) companies and law firms in more
than 150 (Present 190 countries) countries belong to INTA and others interested in
promoting trademarks. INTA offers various educational seminars and publications,
including many valuable materials available at no cost on the Internet (see INTA‘s
home page at http://www.inta.org). INTA members have collectively contributed
almost US $ 12 trillion to global GDP annually. INTA undertakes advocacy [active
support] work throughout the world to advance trademarks and offers educational
programs and informational and legal resources of global interest. Its headquarters in
New York City, INTA also has offices in Brussels, Shanghai, Washington DC, and
Geneva and Mumbai. This association was founded in 1878 by 17 merchants and
manufacturers who saw a need for an organization. The INTA is formed to protect
and promote trademark owners' rights, secure applicable legislation (the process of
making laws), and give aid and encouragement to all efforts for the advancement and
observance of trademark rights.
World Intellectual Property Organization (WIPO) was founded in 1883 and is a
specialized agency of the United Nations whose purposes are to promote intellectual
property throughout the world and administer 23 treaties (Present 26 treaties) dealing
with intellectual property. WIPO is one of the 17 specialized agencies of the United
Nations. It was created in 1967 to encourage creative activity, to promote the
protection of Intellectual Property throughout the world. More than 175 (Present 188)
14
nations are members of WIPO. Its headquarters in Geneva, Switzerland, current
Director-General of WIPO, Francis Gurry, took charge on October 1, 2008. The
predecessor to WIPO was the BIRPI [Bureaux for the Protection of Intellectual
Property] it was established in 1893. WIPO was formally created by the convention
(meeting) establishing the world intellectual property organization, which entered into
force on April 26 1970. Berne Convention for the Protection of Literary and Artistic
Works (the Berne Convention) An International copyright treaty called the convention
for the protection of Literary and Artistic Works signed at Berne, Switzerland, in
1886 under the leadership of Victor Hugo to protect literary and artistic works. It has
more than 145 member nations. The United States became a party to the Berne
Convention in 1989. The Berne Convention is administered by WIPO and is based on
the precept that each member nation must treat nation must treat other member
countries as its nationals for copyright purposes (the principle of ―nation treatment‖).
In addition to establishing a system of equal treatment that internationalized copyright
amongst signatories, the agreement also required member states to provide strong
minimum standards for copyrights law. It was influenced by the French ―right of the
author‖.
Madrid Protocol It is a legal basis is the multilateral treaties Madrid (it is a city
situated in Spain) Agreement concerning the International Registration of Marks of
1891 and the protocol relating to the Madrid Agreement 1989. The Madrid system
provides a centrally administered system of obtaining a bundle of trademark
registration in a separate jurisdiction. The protocol is a filing treaty and not a
substantive harmonization treaty. It provides a cost-effective and efficient way for the
trademark holder. It came into existence in 1996. It allows trademark protection for
more than sixty countries, including all 25 countries of the European Union.
Paris Convention, The Paris Convention for the protection of Industrial Property,
signed in Paris, France, on 20 March 1883, was one of the first Intellectual Property
treaties, after a diplomatic conference in Paris, France, on 20 March 1883 by Eleven
(11) countries. According to Articles 2 and 3 of this treaty, juristic (one who has
thorough knowledge and experience of law) and natural persons who are either
national or domiciled in a state party to the convention. The convention is currently
still in force. The substantive provisions of the convention fall into three main
categories: National Treatment, Priority rights and Common Rules. An applicant for a
trademark has six months after applyingto any of the more than 160 member nations
to file a corresponding application in any of the other member countries of the Paris
Convention and obtain the benefits of the first filing date. Similar priority is afforded
for utility patent applications, although the priority period is one year rather than six
months. WIPO administers the Paris Convention.
North American Free Trade Agreement (NAFTA) came into effect on January 1,
1994, and is adhered to by the United States, Canada, and Mexico. The NAFTA
resulted in some changes to U.S. trademark law, primarily about marks that include
geographical terms. The NAFTA was built on the success of the Canada-U.S Free
Trade Agreement and provided a complement to Canada‘s efforts through the WTO
agreements by making deeper commitments in some key areas. This agreement has
15
brought economic growth and rising standards of living for people in all three
countries.
General Agreement on Tariffs and Trade (GATT) was concluded in 1994 and is
adhered to by most of the major industrialized nations in the world. The most
significant changes to U.S intellectual property law from GATT are that non-use of a
trademark for three years creates a presumption that the mark has been abandoned and
that the duration of a utility patent is now twenty years from the filing date of the
application (rather than seventeen years from the date the patent issued, as was
previously the case)
Various International Treaties
There are different subject matters of intellectual property like Patents, Copyright,
Trademarks, Industrial design, Plant Varieties etc. The need for protection in these
different subjects arose in different periods. These are reflected in different treaties.
Under the aegis of WTO, Agreement on TRIPS remains the most influential,
comprehensive, and inclusive of all. Other treaties are covered here for background
information.
1. Paris Convention for Industrial Property, 1883 –Since it deals only with
Industrial property, it covered only Patents and Trademarks. It was among the first
treaties to recognize various principles of international trade like National Treatment,
Right of Priority, Common rules etc.
2. Bern convention for literary and artistic works, 1886 – It provided for the
copyright system. It does not provide for any formality to claim protection. Protection
is automatically accorded to any creation, provided work is original and other
conditions under the treaty are fulfilled. It means that your work, if original, is already
protected. You can claim that you have copyright.
3. Madrid Agreement, 1881 – Governs the international recognition of trademarks.
This agreement made international fillings easy and cheap.
4. Patent co-operation treaty, 1970 – It was earlier not possible for an entity to
claim protection in different countries by a single application. This was made possible
as it aimed for co-operation and was open for all parties to the Paris convention.
5. Budapest Treaty of 1980 – It made possible patenting for micro-organisms. The
claimant is required to deposit his invention on micro-organisms with an Authority –
‘International depository of Micro-Organisms’ under WIPO. He shall make all the
adequate disclosures.
6. Trademark Law Treaty, 1994 Harmonized administrative procedures and
introduced service marksin the ambit of trademarks. Earlier trademarks were accorded
only to goods.
7. The Hague Agreement concerning the International Deposit of Industrial
Design1925. It created the International Design Bureau of WIPO.
8. International Union for protection of new plant varieties, 1961 This provides
breeders and farmers with the right to new plant varieties.
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9. Agreement on Trade-Related Aspects of Intellectual Property Itis a landmark
and most comprehensive treaty on Intellectual property. While earlier treaties subject
matters were specific, TRIPS deals with eight kinds of property rights – Patents,
Trademarks, trade dress, Copyrights, Industrial Designs, Plant Varieties, Integrated
Circuits and layouts. Geographical Indication. Further, almost all countries are a TRIP
party. In earlier treaties, only limited countries participated. It also provides an
enforcement mechanism that was not available in WIPO treaties. It mandated all the
member countries to make their domestic laws complaints to TRIPS. India passed
specific laws and amended others. India’s IPR regime now stands complaint fully to
TRIPS.
E.g., India amended patent law in 2005 to provide product patent protection. Earlier
protection was available only to processes. TRIPS was the result of discussions held
in the Uruguay Round, which led to the formation of WTO. This treaty is an offshoot
of the General Agreement on Trade in Goods (GATT). This treaty provided a robust
Dispute Resolution Mechanism and stringent penal provisions under the auspices of
WTO.
Further, every treaty under WTO has based some principle which is
1. National Treatment – No foreign products, once they enter domestic territories,
shall be discriminated against in any manner. This also applies to intellectual
property. Members must accord similar treatment to foreign creations, as they do to
domestic ones.
2. Most Favoured Nation – If a member provides some privilege, favourable treatment
or exemption to another country or group, other members must get similarly
favourable treatment.
3. Right to priority treatment – If a similar patent application has been filed in two
different countries, then the prior applicant has the right to the patent.
4. Concept of Minimum Standards – This treaty provides a minimum level of
protection that every member should provide to intellectual property. Members have
the discretion to provide more protection than minimum standards.
5. Universal Copyright Convention, 1952. UNESCO administers this convention.
This exists simultaneously with Bern Convention. This treaty provides for procedural
formalities for filing and recognition of copyright. As the Bern convention provides
for an automatic route to copyright, this treaty has lost its relevance
International copyright treaties
Berne convention 1886, for protection of literary and artistic works
Rome convention 1961, for the protection of performers and producers of
phonograms and broadcasting organizations.
Geneva convention 1971, for the protection of producers of phonograms against
unauthorized duplication of their phonograms
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Brussels convention 1974, related to the distribution of programme carrying signals
transmitted by satellite
WIPO copyright treaty 1996
WIPO performances and phonograms treaty 1996
Current IP Laws in India
Copyright
Copyright Act of 1957, copyright rules 1958
Amendments to copyright 2012
Customs
Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007
Designs
The Designs Act, 2000
The Design (Amendment) Rules, 2008
Geographical Indications
Geographical Indications of Goods (Registration and Protection) Act, 1999
Geographical Indications of Goods (Registration and Protection) Rules, 2002
Geographical Indications of Goods (Registration and Protection) Rules, 2020
Information Technology
The Information Technology Act, 2000
The Information Technology Rules, 2000
Cyber Regulations Appellate Tribunal (Procedure) Rules, 2000
Patents
The Patents Act, 1970
The Patents (Amendment) Act, 2005
The Patents Rules, 2003
The Patents (Amendment) Rules, 2006
The Patents (Amendment) Rules, 2020
Plant
Plant Varieties Protection and Farmers' Rights Act, 2001
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Semiconductor and Integrated Circuits
Semiconductor Integrated Circuits Layout Design Act 2000
Rules for the Semiconductor Integrated Circuits Layout Design Act 2000
Trademarks
The Trade Marks Act, 1999
The Trade Marks Rules, 2002
The trademarks (amendment) act 2010
Biological diversity
Biological diversity act 2002
PATENTS
A patent for an invention is granting a property right to the inventor issued by the
Indian patentoffice. Generally, the term of a new patent is 20 years from the date on
which the application for the patent was filed in India or, in exceptional cases, from
the date an earlier related application was filed, subject to the payment of maintenance
fees. Indian patent grants are effective only within India, Indian territories,
Under certain circumstances, patent term extensions or adjustments may be available.
The right conferred by the patent grant is, in the language of the statute and of the
grant itself, the right to exclude others from making, using, offering for sale, or
selling‖ the invention in India or importing‖ the invention into India. What is granted
is not the right to make, use, offer for sale, sell or import, but to exclude others from
making, using, offering for sale, selling or importing the invention. Once a patent is
issued, the patentee must enforce the patent without the aid of the IPO.
Huawei, Mitsubishi Electric, Samsung and Qualcomm filed more international patent
applications each than the whole of India in 2019, showed the latest data compiled by
the Geneva-based World Intellectual Property Organization (WIPO). India is
markedly less spending on research and development (R&D).India filed only 2,053
patents applications in 2019, accounting for fewer than 1% of the global filings (see
19
chart). In contrast, Huawei alone filed 4,411 applications, followed by Mitsubishi
Electric (2,661), Samsung (2,334) and Qualcomm (2,127).
The essential purpose of these amendments is to bring in efficiency in the procedures
followed for application, review, and disposal of the patents filed. Modernization of
the IP offices where-in technology is augmented for IT-enabled IP offices (e-filing,
paperless electronic process, etc.). Removal of backlog and speedy examination &
disposal of applications is cited for the augmentation of Manpower
Patentable:
A new product or process involving an inventive step, capable of making use in
industry. It means the invention to be patentable should be technical and should meet
the following criteria
i) Novelty: The matter disclosed in the specification is not published in India or
elsewhere before filing the patent application in India.
ii) Inventive Step: The invention is not obvious to a person skilled in the art in the
light of the prior publication/knowledge/ document.
iii) Industrially applicable: Invention should possess utility to be made or used in
industry.
Non-patentable:
The following are non-Patentable inventions within the meaning of the act:
(a) an invention that is frivolous or which claims anything obviously contrary to well
established natural laws
(b) an invention the primary or intended use or commercial exploitation of which
could be contrary to public order or morality or which causes serious prejudice to
human, animal or plant life or health or the environment
(c) the mere discovery of a scientific principle or the formulation of an abstract theory
(or discovery of any living thing or non-living substances occurring in nature)
(d) the mere discovery of a new form of a known substance which does not result in
the enhancement of the known efficacy of that substance or the mere discovery of any
new property or mere new use for a known substance or of the mere use of a known
process, machine or apparatus unless such known process results in a new product or
employs at least one new reactant; Explanation- For this clause, salts, esters, ethers,
polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers,
complexes, combinations and other derivatives of known substance shall be
considered to be the same substance, unless they differ significantly in properties
about efficacy.
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(e) a substance obtained by a mere admixture resulting only in the aggregation of the
properties of the components thereof or a process for producing such substance
(f) the mere arrangement or re-arrangement or duplication of known devices, each is
functioning independently of one another in a known way; (g) a method of agriculture
or horticulture.
(h) any process for the medicinal, surgical, curative, prophylactic,diagnostic,
therapeutic or other treatment of human beings or any process for a similar treatment
of animals to render them free of disease or to increase their economic value or that of
their products.
(i) plants and animals in whole or any part thereof other than micro-organisms but
including seeds, varieties and species and essentially biological processes for
producing or propagating plants and animals.
(j) a mathematical or business method or a computer programme per se or
algorithms.
(k) a literary, dramatic, musical or artistic work or any other aesthetic creation,
including cinematographic works and television productions.
(I) a mere scheme or rule or method of performing a mental act or method of playing
a game.
(m) a presentation of information.
(n) topography of integrated circuits.
(o) an invention that, in effect, is traditional knowledge or aggregation or duplication
of known properties of a traditionally known component or component.
(p) Inventions relating to atomic energy and the inventions prejudicial to the interest
of the security of India.
Product and process patents
The issue relating to protecting a product and protecting a process is very relevant
only in the case of inventions in the chemical field. The basic philosophy behind the
grant of a patent for the preparation of a product is that the said product can be
manufactured by a new, different and innovative method. When one refers to a patent
as a product patent, he has developed a new product. Similarly, when one refers to a
patent as a process patent, he has developed a new and improved process for
producing a known product. In the case of a product patent, one will have claims
(defining the area of the legal protection) for the new product and, if he desires, can
also have claims for the process for preparing the said product. Of course, if he does
not claim the process is mandatory that the process for the preparation of the new
product should be disclosed in the text of the document (specification). Whereas in
the case of a process patent, one can have only claims for the process and not for the
product, as the product prepared by the said process is already known, and therefore,
there is no novelty in such a product. With the coming into force of the product patent
regime in India, only those new products on the date of filing of the application for a
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patent for that product will be patentable and not others. The exception is the WTO
applications (meaning those applications claiming new pharmaceutical, agricultural,
chemical products) filed since Jan 1st1995. In other words, the products which are
already known before Dec 31st 2004 (except the above said WTO applications)
cannot be patented as their novelty has been lost.
On the other hand, the rights in the process patent are confined to the use of that
particular process of preparing the product and nothing else. Therefore, anybody else
can develop an alternate process, and if it satisfies the criteria of patentability, he can
secure a patent for that alternate process. In this context, it should be noted that the
product obtained by the processes is already known in this case. Therefore, nobody
gets protection for the said product. Hence, the commercial production of the said
compound by the alternate process is possible without the fear of any infringement,
even though a patent for another different process of preparing the same substance is
in force in the same country. The possession of a patent confers the patentee not
merely certain valuable monopoly rights and privileges but also certain obligations
and duties. It is also to be noted that if the alternate process for a product developed is
very efficient. The said product is beneficial having good commercial potential, the
two different patent holders for the respective inventions (one for the product and
another for the improved process) can come together and have a joint agreement
(cross-licensing) and bring the new product to the market and share the profits
amongst themselves. Such an exercise will benefit society at large in getting the fruits
of the research work. Instead of hampering research and development (R&D) in
developing alternative processes for a product under the product patent regime, it will
enhance developmental activities.
As mentioned above, in many countries, including India, the patent law excludes
certain specific kinds of inventions from being patentable even though the inventions
satisfy all the three essential criteria for patentability, namely, novelty, inventive step
(non-obvious) & Utility. Examples of such non-patentable inventions are nuclear
transformation, human beings, plants & animals etc. The types of inventions which
are not patentable are stipulated in the patent legislation of the country concerned.
In India, the inventions for which patents can be secured is defined in Section 2(1) (j)
of the Act. The term process‖ may be defined as one or more steps or acts performed
on materials/substances to produce a result (product/composition /material
/substance). The process should be regarded as an artificial process or operation of an
industrial nature wherein certain starting materials/substances are subjected to the
process or operation to convert the starting materials/substances in such a manner to
produce a new or known and useful article or substance or substance or product which
is tangible. Suppose the starting materials/substances used in the process remains
unaltered, and the resulting product also remains the same as the starting
materials/substances. In that case, the process may not be an invention for which
patent protection can be secured.
What is patent of addition
When an invention is patented, and if any improvements or modifications are coming up
for that invention as a natural process, as a result of the feedback of the market or
22
industry, then the original patented product or process may be protected by the patent of
addition in India. A patent of addition is granted after the grant of a patent for the main
inventions. The Indian Patent Law offers protection for such improvements or
modifications through Patents of Addition. Sections 54, 55 and 56 of the Indian Patents
Act, 1970 deal with the law about patents of addition and the same are reproduced.
Patent registration flow chart
Publication of patent application in India
Usually, every patent application is published after 18 months of applying and
objections are invited.
The patent application shall not be open to the public for eighteen months after filing
or date of priority, whichever is earlier.
The Controller may issue direction to prohibit or restrict such publication.
In the secrecy direction, the application will be published when the secrecy directions
cease to operate.
The publication will include the particulars of the date of application, number of
applications, name and address of the applicant and an abstract.
Examination of patent application in India
23
An examination is taken up only if the applicant or any other interested person makes
a request in the prescribed manner for such examination within 48 months from the
date of filing of the patent application.
If such a request is not made within the prescribed time, the patent application is
treated as withdrawn.
When the patent application is in respect of an invention for a chemical substance
used as an intermediate in the preparation of a medicine or drug including insecticides
etc. used for protection or preservation of plants, the request for examination has to be
made within 12 months. or within 48 months from the date of the application,
whichever is later
Acceptance and Advertisement of Complete Specifications-
Once the complete specification is accepted, the Controller notifies it the applicant
and advertises it in the Official Gazette.
From the date of advertisement of the acceptance of the complete specification and
until the date of sealing of the patent, the applicant will have the like privileges and
rights as if a patent for the invention had been sealed on the date of advertisement
Granting of patent application in India
Opposition to the Grant of Patent: Any person interested in opposing the grant of
patent may give notice to the Controller of such opposition within 4 months from the
date of advertisement of the acceptance on the grounds like:-
1. the invention was wrongfully obtained by the inventor/applicant.
2. the invention, as claimed in any claim of the complete specification has been
anticipated in a specification filed for another patent earlier.
3- The invention claimed in any claim was publicly known/used in India before the
priority date of the claim.
4- The subject of the patent is not an invention within the meaning of the Act.
5- The information furnished is false.
6- Geographical origin of biological material is not disclosed or falsely disclosed.
Grant and Sealing of Patent
Where the application for a patent along with complete specification has been
accepted either without opposition.
After the opposition, a patent shall be granted if the applicant makes a request in the
prescribed manner for a grant of patent.
The request has to be made within six months from the date of advertisement of the
acceptance of the complete specification.
The patent so granted shall be sealed with the seal of the patent office and the date of
sealing of patent shall be entered in the register.
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Rights Under Indian Patent Law
Under section 47, a patent granted under this Act shall confer upon the patentee
(a) where the subject matter of the patent is a product, the exclusive right to prevent
third parties, who do not have his consent, from the act of making, using, offering for
sale, selling or importing for those purposes that product in India
(b) where the subject matter of the patent is a process, the exclusive right to prevent
third parties, who do not have his consent, from the act of using that process, and
from the act of using, offering for sale, selling or importing for those purposes the
product obtained directly by that process in India:
Right to exploit the patent.: The patentee has a right to prevent third parties from
exploiting the patented invention.
Right to grant license: The patentee has the power to assign rights or grant licenses.
Right to surrender: The patentee is given the right to surrender the patent by giving
notice in the prescribed manner to the controller.
Right to sue for infringement.: A patentee is given the right to institute proceeding for
infringement of the patent in a district court.
TRANSFER OF PATENT
A patent is the exclusive property of the inventor. It hence can be transferred from
the original patentee to any other person by assignment, grant of license, or operation
of law.
The IPA requires that an assignment, license or creation of any other interest in a
patent must be in writing, clearly specifying all the terms and conditions governing
the rights and obligations of the parties.
This document must be registered in the prescribed manner within the prescribed
time.
The person getting such entitlement in a patent has to apply in writing to the
Controller to register the title.
Patent application process
Overview of the Application Process
The process of preparing, filing, and shepherding a patent application through the
PTO (Patent & Trademark Office) towards issuance is called prosecution. An
application may be filed by himself or herself or, as is more usual, by a 600 patent
attorney or patent agents in India. Inventors file only 20% of all applications without
the assistance of attorneys. The application is filled with PTO. It will be assigned to
one of more than 100 patent examiners with experience in technology related to the
invention who will review the application and conduct a search of patent records to
ensure the application complies with the statutory requirements for patents. The
25
process may continue for several rounds. A Notice of Allowance will be sent to the
applicant, which specifies an issue fee paid to the PTO for the patent to be granted.
Individual
inventors
Small entity Other than small
entity
Application for
grant of patent
1600 4000 8000
Application for grant of patent form 01
Provisional or complete specification form 02
Early publication requests can be made with form 9
Individual
inventors
Small entity Other than small
entity
Request for early
publication
2500 6250 12500
Request for examination of patent form 18
Individual
inventors
Small entity Other than small
entity
Request for
examination
4000 10000 20000
Refer forms and fees on government website www.ipindia.nic.in
Response to the examination report (objections): the patent agent or attorney may
charge a professional fee in response to objections based on the complexity of
objections and the number of objections received. The fee for a response to objections
varies 5000-20000 rupees depending on the complexity, subject matter and number of
objections.
Searching a patent
A patent search or a patentability search is a search conducted in patent databases and
the literature available to check whether any invention similar to your invention
already exists. In other words, it evaluates your chances of getting a patent grant.
Therefore, instead of going forth with the filing, if one conducts the patent search, one
can get a clear idea about the invention's patentability, whether the application should
be filed and the strengths and weaknesses of the invention.
Patent databases: Patent databases are an excellent source for extracting patent
information that cannot be carried out at a reasonable price with conventional
methods.
Patent databases which contain bibliographic data,abstracts, and claims, full text,
indexing data, legal status data, graphical data
26
Search for prior art before filing patent applications •Avoid infringement, Monitor
patents in a given area of technology, Monitor patents by a company, university or an
individual, Locate information on a specific patent •Market analysis/statistics,
Identifying technological trends, Searches for potential cooperation partners and
licensors.
Advantages of using onlinedatabases in acquiring patent information time efficiency
cost-effectiveness comprehensiveness up-to-date information easily assessable
information from your desk complete coverage on an international level
Maintain a current, knowledgeable position - current intellectual property portfolio
possible patent infringement competitor research make informed business decision
decide future research directions
Current awareness information is critical for protecting an organization’s research and
marketing endeavours
International Patent Classification (IPC) works as a universal classification for patents
started in 1975 and periodically updated. We currently use IPC 7th Edition. Section,
Class & Group. The International Patent Classification looks like this:
A 02 J 1/00
A=Section 02=Group J=SubGroup 1=Class 00=SubClass
A 47 J 27/09 includes the safety device on your rice cooker
B 63 G 11/00 covers your various aircraft carriers
US Patent Classification US Patents are classified with 400+ main classes and
thousands of subclasses.
424 / 497
424= Class 497=SubClass
Patent search tools
FREE PAID
Uspto
Espacenet
Depatis
PAJ CIPO
Many more patent office sites
CASWEBDelphion
Intellectual Property Network
DialogGetThePatent.com
IPOrganizer.com
IP Search Engine
Lexis-Nexis
MicroPatent
PATSCANQuestel
Orbit Patent Database
SCIFINDER
Shadow Patent Office
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STN
SurfIP.co
The Need for a Search:
Patentability requires novelty and non-obviousness.
The patentability search, sometimes called a novelty search
A search is recommended to determine the feasibility of obtaining a patent.
A novelty search is somewhat limited in scope and is designed to disclosewhether an
application will be rejected based on lack of novelty orobviousness.
A novelty search can usually be completed for less than 5000 rupees.
If an invention is intended for immediate commercial use or sale, an additional search,
call an infringement search or investigation, is often conducted concurrently with the
novelty search.
This novelty search is thus more expensive. Conducting a patent search is
indispensable before filing a patent application. The Indian Patent Advanced Search
System, InPASS, was introduced on Feb 27th, .2015. Before InPASS, IPAIRS [Indian
Patent Information Retrieval System] was used to conduct a patent search in India.
InPASS is an updated version of IPAIRS as it allows for a full-text search of all
Indian patents and Patent Applications. Apart from this, InPASS also allows a person
to conduct a patent search using Wild Cards and Boolean Operators. Now, InPASS is
the Indian patent office database used to conduct an advanced patent search in India.
Types of Application (global)
1.Provisional Application
2. Utility Application
3. Design Application
4.Plant Application
5.Continuation Application
6.PCT (Patent Cooperation Treaty) Application
7.Divisional Application
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For India required applications
Ordinary Applications
Convention Application
Patent of Addition Application
Divisional Applications
PCT Application
Drafting of a patent.
Patent drafting, besides the most crucial document in the entire patent registration
process, is also considered to be one of the most complex techno-legal documents.
The patent drafting/writing specification contains the aspects of the invention such as
field of invention, background, summary, detailed description, patent drawings,
abstract and patent claims for which protection is sought. Two types of patent
specifications can be drafted based on the invention stage and the need for clients.
The provisional patent specification is mainly drafted to describe the invention for the
invention's initial stage andsecure the invention's priority date. No patent is granted
based on the provisional patent specification. On the other hand, a non-provisional
specification is drafted with patent claims for the invention ready to launch on the
market. The non-provisional specification has to be drafted within 12 months from the
date of provisional patent filing
Filing of a patent
Application for a patent can be filed only on the payment of a full fee
The filing fee is charged based on the number of pages and the number of claims made in
the patent document.
No extra fee is charged up to 30 pages and ten claims.
Power of attorney if applicable.
Application, Specification and other documents should be either in Hindi or English
language
If application discloses sequence listing of nucleotides and amino acids, it should be filed in
electronic form
There is only one application filed for one invention.
This must be done in a prescribed form along with the prescribed fees in the appropriate
patent office.
It should be accompanied by a provisional or a complete specification
29
A specification is an accurate description of the patent stating how the invention can be
carried out by the method best known to the applicant. The specification ends with a claim
or claims defining the scope of the invention for which protection is claimed.
Every application must be accompanied by a provisional or a complete specification.
• It is possible to apply with provisional specifications. However, it is necessary to file the
complete specifications within one year of filing the original patent application.
• The twelve-month limit can be extended to 15 months if an application is made to the
Controller with such request and the prescribed fee is paid.
How to file a patent application in India
One can file the Patent application in the Indian Patent Office in two ways:
a. Online Patent filing :
also known as online Patent registration, the Indian Patent Office’s Electronic Patent
filing application isan e-service portal.
b. Offline Patent filing :
Apart from performing Patent filing online, one can also file a Patent through
the offline method, where one needs to submit hard copies to the respective Patent
Office. However, filing an offline Patent Application is 10 % more compared to the
official fee of the online patent registration mode.
Indian Patent office has a Patent filing application a web portal, that provides Patent
filing online facility for interaction, communication, and transaction between the
Patent office and the stake holder, service facilitates user-friendly and transparent
system which covers comprehensive Patent filing online system, wherein, in addition
to the online patent registration of new applications, subsequent online filing
formalities can also be completed.
What are the documents required to file a patent application in India?
A piece of work that contains:
Description of the invention
Drawings necessary to understand the invention
One or more claims
An abstract
The name(s) of the inventor(s)
Corresponding foreign applications, if applicable.
30
Parts of the patent document
1.Request for grant of application (application form):
title of the invention
name, address of the patent agent
name, address of the inventor
filing date
priority date
publication number and date
application number
international patent classification
2.Specifications: Disclosure of the invention in a manner sufficiently clear and
complete for it to be carried out by a person skilled in the art.
Description of a related art
Field of invention
Background of invention
3.Claims: define the matter for which protection is sought. To understand claims,
contact the patent agent.
4.Abstract: a concise summary of the disclosure of the information
5.Drawings: illustration to show every feature of the invention and may consist of
several views
Patent specification
The specification, which is also called the disclosure, is a written description of an
invention. The patent specification is drafted both to satisfy the written requirements
for patentability and define the scope of the claims. While the layout of a specification
varies from place to place, it is relatively consistent between the U.S. and Europe,
except that B and C are unique to the U.S. For this tutorial, the claims are described
separately from the specification. The sections of a patent specification are:
A. Title of the invention.
The title of the invention is designed to describe the essence of the invention in a few
words.
B. Cross-reference to related applications. In the U.S., it is required that a patent
application include a section titled cross-reference to related applications. In this
section, the applicant lists any provisional patent applications claiming priority, or if
the application is a continuation, the patent application number(s).
31
C. Statement regarding federally sponsored research (if applicable). In the U.S., it is
also required that the applicant include a statement regarding federally sponsored
research if the invention was made under a government contract or if federal grant
money was used to fund the research.
D. Background of the invention. The background of the invention is typically drafted
for a jury audience. Selected art in the field is discussed to emphasize differences with
the current invention and point needed improvements provided by the current
invention.
E. Summary of the invention. The summary of the invention, which is distinct from
the abstract, is meant to discuss the invention (i.e., the claims) rather than the
disclosure as a whole. Often, the summary will discuss the advantages of the
invention or how it solves the problems existing in the art, such as those presented in
the background of the invention.
F. Description of the drawings. If drawings are included in the application, a brief
description of each drawing is required.
G. Detailed description of the invention. The detailed description of the invention is
the meatiest section of a patent. Its purpose is to adequately and accurately describe
the invention.
There are generally two sections:
 A general explanation of the invention and how to practice it. The invention is
described in its broadest sense to show that the inventors have a broad view of the
scope of the elements. Often, preferred embodiments of the invention are described.
Such embodiments are generally more limited versions of the broadest concept and
are provided to support a fallback position of narrower claims if the broader concept
is not patentable. Definitions of key terms are often provided and are extremely
important in interpreting the scope of the claims.
 Specific examples of how to practice the invention. A patent application does not
require examples. However, in practice, examples can often assist in showing
patentability (e.g., enablement). The examples may or may not have been performed
by the inventors. Working examples present completed undertakings. Prophetic
examples are hypothetical undertakings and are always written in the present or future
tense. Typically, the examples demonstrate a practice of one or more specific
embodiments of the invention. H. Sequence listing. A sequence listing is required if
the application includes nucleic acid or amino acid sequences. If sequences are
disclosed, every nucleic acid molecule that is at least ten nucleotides, and every
protein that is at least four amino acids, must be included. In many jurisdictions,
sequence listings are required to be in a specific text format. The USPTO provides a
free software download called Patent. which is often used to compile sequence
listings.
Patent claims.
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The claims are the essential part of a patent. The goal of the claims is to point out
particularly and distinctly claim the subject matter which the applicant regards as his
or her invention. There must be at least one claim in a patent, and the reasoning is that
possible infringers must understand what is and is not protected based on the claims.
Parts of a Claim A claim is generally presented in three parts, the preamble, a
transitional phrase (or word), and the body. Preamble The preamble is an introductory
statement that names the invention that is to be claimed. For example, A method for
making a genetically modified plant. Transitional Phrase The transitional phrase (or
word) specifies whether the claim is limited to only the elements listed or whether the
claim may cover items or processes with additional elements. Commonly used
transitional phrases include comprisingand consisting of. See also Transitional
Language in Patent Claims for a more in-depth description of transitional phrases.
Body, The body of a claim lists the elements (also referred to as limitations) or steps
of the named invention. Claims may be independent or dependent. Independent
Claims An independent claim defines an operative, complete invention by itself,
without referring to or including limitations of other claims. Independent claims
intend to broadly cover all embodiments of the invention without reading on prior
art.Dependent Claims Dependent claims refer back to and further defines an invention
recited in another claim. In doing so, a dependent claim includes all of the limitations
of the claim to which it refers. Dependent claims are often used to define the scope of
the elements in an independent claim and are written to protect specific embodiments
of an invention. Should a court find that the main independent claim was wrongly
granted, a dependent claim may still be valid and is used as a "fallback position".,
Dependent claims also make it easier for a jury to determine whether infringement as
occurred if the infringing activity is spelt out in a claim rather than just inferred.
Management of IP assets (IPAs) is collections of intellectual properties – patents,
trademarks, copyrighted works, industrial designs, geographical indications, and trade
secrets strategically chosen for their business value. IP assets have economic value
because of their ability to enhance the value and financial return from technologies,
products and services. The development and management of intellectual property
have become a primary concern of private enterprises, especially in the fast-growing
technology and cultural industries. The field of Intellectual Asset Management –
sometimes called IAM, has become a professional discipline taught by business
schools and offered as a service by accounting, consulting and law firms.
IP assets, when properly managed, can:
motivate and help generate revenues from product sales and licensing royalties;
increase high-value exports.
Attract high-value foreign direct investment (FDI) and joint ventures.
Help retain and motivate technical personnel.
Stimulate research and development (R&D) based industries and create employment;
support educational and research institutions.
Enhance corporate valuation.
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Promote funding for R&D, which provides and enhances needed technologies and
products.
Provide bargaining power in technology transfer negotiations.
Help to gain access to goods and technologies through licensing agreements.
IP portfolio management
Portfolio management is an essential facet of IP management. During an IP audit, the
review of an IP portfolio provides an opportunity to identify IP assets whose value has
become insignificant or markedly decreased. IP valuation helps in budgeting and
resource allocation decisions. A bloated portfolio ties up capital and management time
in underperforming assets. In many instances, value is added by selling, licensing or
termination of these assets. It is necessary to consider whether poor performance is
the result of bad management or weak IP. Misjudgement can result in a handover of
value to a shrewd purchaser. Several private equity firms in Europe specialize in
reviving underperforming brands.
THE MACROECONOMIC IMPACT OF THE PATENT SYSTEM
A. Introduction
A patent is a set of exclusive rights granted by a sovereign state to an inventor or assignee for
a limited time in exchange for detailed public disclosure of an invention. The patent system's
role in economic growth received greater attention in the recent past, especially after the
Apple, Samsung case. The patent system is designed in such a way as to encourage
innovation. By conferring rights on the owner to exclude competitors from the market,
patents offer the incentive for people to study new technology. In some fields, particularly
pharmaceuticals, it is also argued that the monopoly of the patent in the market allows the
owner to recover the huge expenses invested in the research and development phase3.
Technology and knowledge are essential factors for economic growth and development.
Patents are legal instruments intended to encourage innovation by providing a limited
monopoly to the inventor (or their assignee) in return for the disclosure of the invention. By
offering exclusive rights for a limited period, an inventor may recover R&D costs and
investments. It also promotes investment to commercialize and market new inventions so that
the general public can enjoy the fruit of the innovation. Further, the system is designed to
disseminate knowledge and information to the public by publishing patent applications and
granted patents. Therefore, allowing the ideas to become public and forming breeding
grounds for creating many more new and valuable inventions through the dissemination of
the knowledge included in the published invention.
B. Relationship between the patent system and economic growth.
The patent system has an impact on the economy as a whole. The surrounding economics
group of patents or a single patent revolves around the balance between the expense of
maintaining the patents, and the income derived from owning those patents
C. Patents & free and fair market competition
A patent is an exclusive right enjoyed by the inventor to exclude others from commercially
exploiting the invention for a limited period. However, in order to get Patent rights, the
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inventor shall disclose the invention. Thus disclosure of the invention is an essential
consideration in any patent granting procedure. The balance between the interest of patent
holders and that of the public has recently been discussed a lot in the light of competition
policy because the right to exclude others particularly referred to as monopoly. The aims and
objectives of patent and competition policy may seem prima facie as odds. However, both
competition policy and patent law are complementary, as both aim to encourage innovation
and competition. Patent rights are not legal monopolies froma competition law perspective.
They do not necessarily confer monopoly power on patent rights holders. Most countries
adopted a market system, where free and fair competition between the enterprises are allowed
within limits defined by law. Such competitions are considered the best means of satisfying
the demand-supply chain and thereby protecting the consumer interest and the economy.
However, when there is competition, the possibility of unfair practices are high. Patent
holders may deploy their rights improperly to the detriment of competition and technological
progress by forming a cartel and suppressing competition in associated markets or alternative
technologies to raise the entry barriers. Such practices will be having a direct detrimental
impact on the economy as well as the consumer interest. Rules on the prevention of
restrictive trade practices as well as on prevention of unfair competition interrelated as both
aims at ensuring an efficient operation of the market. However, fair play in the market cannot
be ensured only by the protection of industrialproperties. Therefore, it is necessary to
supplement the laws on industrial property. This can be done by preparing competition law
flexible, and the protection thereunder must be independent of any formality such as
registration. In order to maintain fair competition within the market, competition policy
prohibits such restrictive trade practices as well as agreements that restrict fair competition in
the market. Hence, the interplay between competition policy and the patent law ensures
innovation by keeping away abuse of dominant powers, maintaining fair competition and
improving consumer welfare.
D. Patent policies and economic growth
The policymakers have recognized the importance of Patents and the needs for specific
policies for patents during the early 1990. As a result, policymakers recognized the role of the
patent system as an important element of the institutional infrastructure, thereby encouraging
private investment in the Research & Development (R &R&D) sector. Patents as a private
and intangible good prevent competition based on free-riding and support innovation-based
competitions through limited monopoly and the public good through innovation disclosure.
Therefore, we can say that the patent system offers a proper balance between two extreme
policies viz. private good and the public good. Besides accelerating the growth in innovation,
patents also assist in determining the directions of technical change, thereby leading to
adopting necessary patent policies in countries with no such practices.
E. Economic impact of patents
The scope of patent protection is regularly assumed to be much broader than determined by
law. It is then no wonder that the assumption that intellectual property rights in general and
patents, in particular, confer an economic monopoly on their owner is considered by Kitch to
be one of the elementary but persistently repeated errors in economic analysis. The economic
importance of patents is rapidly increasing. However, visible and demonstrable evidence of
economic payoff attributable to intellectual property (IP) protection (including patent
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protection) is currently not sufficiently widespread. It is always difficult to analyze the role of
the patent system in the economic development process due to the complexities in separating
or desegregating the effects of IP protection from other factors that impact the developing
economies. The role of patents in economic development is likely to be case-specific, in the
context of both variations from industry to industry and variations among countries. Effects
of patents on a given market may vary widely according to the type of market and whether
there are other barriers to entry. Even in socialist monopole economies, the adherence to
international patent laws was or becomes strict, as the effect is reciprocal for the public
economy, as soon as the level of technology development in these economies creates a
comparative advantage. However, since patents essentially encourage innovation by giving
owners the right to monopolize the market for a limited time, the public will suffer from
patents that are not innovative by paying a higher cost.
Patent offices in India
The head office for Patent Administration in India is in Kolkata. Patent offices have 4 four branches
based on territorial jurisdictions:
MUMBAI- The States of Maharashtra, Gujarat, Madhya Pradesh, Goa and Chhattisgarh and the
Union Territories of Daman and Diu & Dadra and Nagar Haveli.
CHENNAI- The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of
Pondicherry and Lakshadweep.
NEW DELHI- The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar
Pradesh, Uttaranchal, Delhi and the Union Territory of Chandigarh.
KOLKATA- The rest of India.
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COMPULSORY LICENCING
Patentable drugs are not available to the public at a reasonably affordable price is one
of the grounds of granting compulsory licencing. It is permission granted by the
government in the aspect of public interest to a non-patentee to manufacture a
patented product. It is given in a national emergency, extremely important, during
covid like pandemics.
Compulsory licenses are sovereign state authorizations that enable a third party to
make, use, or sell a patented product without the patent holder's consent. Provisions
about compulsory licensing are provided for under both the Indian Patent Act, 1970,
and the international legal agreement between all the member nations of WTO – the
TRIPS. In India. Under Section 84(1) of the Indian Patent Act, 1970, after three years
from the grant of a patent, any interested person may make an application for a
compulsory license because the patented invention:
(a) Does not satisfy the reasonable requirements of the public;
(b) Is not available to the public at a reasonably affordable price; and
(c) Is not worked in the territory of India.
In addition to the grounds mentioned above, according to Section 92 of the Act,
compulsory licenses can also be issued suomotu by the Controller of Patents
according to a notification issued by the Central Government if there is either a
“national emergency” or “extreme urgency” or in cases of “public non-commercial
use”. The said section enables the Government of India to notify to the public of such
extreme circumstances, whereupon, any person interested can apply for a compulsory
license, and the Controller in such case may grant to the applicant a license over the
patent on such terms and conditions as he thinks fit.
The patentee, however, has the right to be heard in the compulsory licensing
application process.
India’s first-ever compulsory license was granted by the Patent Office on March 9,
2012, to Hyderabad-based Natco Pharma for the production of a generic version of
Bayer’s Nexavar, an anti-cancer agent used in the treatment of liver and kidney
cancer. In the Bayer vs Natco case, it was established that only 2% of the cancer
patient population had easy access to the drug and that Bayer was selling the drug at
an exorbitant price of 2.8 lakh INR for a month treatment. Further, on the ground that
Nexavar was being imported within the territory of India, the IPO issued a
compulsory license to Natco Pharma, which assured that the tablets would be sold for
Rs. 8,880/- per month. It was settled that 6% of the net sales of the drug would be
paid to Bayer by Natco Pharma as royalty.
In the second case of Compulsory licensing in India, the Controller rejected the BDR
Pharmaceuticals application for compulsory license (made on March 4, 2013) for the
BMS cancer drug, SPRYCEL. The Controller rejected the compulsory license
application made by BDR for stating that BDR has failed to make a prima facie case
to make an order under section 87 of the Act. The controller in the said case observed
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that BDR Pharmaceuticals had not made any credible attempt to procure a voluntary
license from the Patent holder, and the applicant has also not acquired the ability to
work the invention to the public advantage.
In India's most recent case of compulsory licensing, Lee Pharma, a Hyderabad based
Indian pharma company, filed an application for compulsory license (dated 29.06.2015)
for the patent covering AstraZeneca’s diabetes management drug Saxagliptin. In order to
make a prima facie case, Lee Pharma strived to show that their negotiations for a
voluntary license with the patent owner were not rewarding as they did not receive any
response from the Patent owner within a reasonable period. The grounds alleged by Lee
Pharma were that:
 the patentee has failed to meet the reasonable requirements of the public,
 the patented invention is not available to the public at a reasonably affordable price,
and
 the patented invention is not worked in India.
However, all three grounds of Lee Pharma were rejected by the Controller General,
and the Compulsory license application was refused. The application was rejected
because Lee Pharma failed to demonstrate the reasonable requirement of the public with
respect to Saxagliptin and further failed to demonstrate the comparative requirement of
the drug Saxagliptin vis-a-vis other drugs are also DPP-4 inhibitors. Further, Controller
General held that all the DPP-4 inhibitors were in the same price bracket and the
allegation that Saxagliptin alone was being sold at an unaffordable price was unjustified.
The Controller General also stated that Lee Pharma failed to show the exact number of
patients being prescribed the patented drug. How many of them were unable to obtain it
due to its non-availability. Consequently, it was challenging to hold whether
manufacturing in India was necessary or not.
PATENT COOPERATION TREATY (PCT)
The advantage of PCT is the Simplification of paperwork. It has reduced cost and
reduction in time for obtaining protection for an invention throughout out the world
PCT offers advantages to applicants by giving sufficient time to access the market
potential of their patents in different countries. India is a signatory to PCT and is a
member country. Nearly 150 countries are in PCT, and your rights exist in the entire
world for 2.5 years
The Patent Cooperation Treaty (PCT) assists applicants in seeking patent protection
internationally for their inventions, helps patent Offices with their patent granting
decisions and facilitates public access to a wealth of technical information relating to
those inventions. By filing one international patent application under the PCT,
applicants can simultaneously seek protection for an invention in 150 countries
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throughout the world. The PCT makes it possible to seek patent protection for an
invention simultaneously in many countries by filing a single internationalpatent
application instead of filing several separate national or regional patent applications.
The granting of patents remains under the control of the national or regional patent
Offices in what is called the national phase.
Advantages The PCT System has many advantages for an applicant, for the patent
Offices and the general public:
(a) An applicant has up to 18 months more than if he had not used the PCT to reflect
on the desirability of seeking protection in foreign countries, to appoint local patent
agents in each foreign country, to prepare the necessary translations and to pay the
national fees;
(b) If an international application is in the form prescribed by the PCT, it cannot be
rejected on formal grounds by any PCT Contracting State patent Office during the
national phase of the processing of the application;
(c) The international search report and written opinion contain essential information
about the potential patentability of your invention, providing a solid basis for you to
make business decisions about how to proceed;3
(d) There is also a possibility that during the optional international preliminary
examination, the international application be amended, and then entered into dialogue
with the examiner to argue the case thoroughly and put the application in order before
processing by the various national patent offices;
(e) The search and examination work of patent offices in the national phase can be
considerably reduced thanks to the international search report, the written opinion
and, where applicable, the international preliminary report on patentability that
accompany the international application;
(f) Applicants are also able to fast-track examination procedures in the national phase
in Contracting States that have PCT-Patent Prosecution Highway (PCT-
PPH)agreements or similar arrangements;
(g) Since each international application is published together with an international
search report, third parties are in a better position to evaluate the potential
patentability of the claimed invention;
(h) For an applicant, international publication online puts the world on notice of their
invention. Such an applicant may also highlight their interest in concluding licensing
agreements on PATENTSCOPE, which can be an effective means of advertising and
looking for potential licensees;
(i) Applicants also achieve other savings in document preparation, communication
and translations because the work done during the international processing is
generally not repeated before each Office (for example, he may submit only one copy
of the priority document instead of having to submit several copies); and
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(j) If an invention appears to be not patentable at the end of the international phase,
the applicant may abandon the PCT application and will have saved the costs he
would otherwise have incurred by directly seeking protection in foreign countries,
appointing local patent agents in each foreign country, preparing the necessary
translations and paying the national fees.
Ultimately, the PCT:
– brings the world within reach; – streamlines the process of fulfilling diverse
formality requirements; – postpones the significant costs associated with seeking
international patent protection; – provides a solid basis to patenting decisions; and – is
used by the world’s major corporations, research institutions and universities when
they seek international patent protection.
Conditions for grant of a (valid) patent:
A patent application must be filed
The invention must be new (novel) and involve an inventive step (non-obvious)
The invention must be industrially applicable
The application must fully describe the invention sufficiently to enable the
performance of the invention.
The application must define the patent rights sought in patent claims that are
somewhat based on what is described
PCT System deals with patents under two main phases:
INTERNATIONAL PHASE
It starts with the filing of the PCT application.
Involves many processes such as international search, international examination,
international publication with regards to the laws of signatory countries before the
national phase.
The search, examination and publication done at this stage need not be repeated for
every other country during the national phase.
The countries that the application is to be filed rely on such an international report,
thus reducing the time required for the patent to be registered.
NATIONAL PHASE
It falls at 30 months from the filing date of the international application or the earliest
priority date of the application if a priority is claimed.
In the national phase, the patent application is subject to each country's patent laws,
regulations, and practices.
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Rejections on form and content may not be raised provided that they conform to the
requirements of the PCT.
For example, A person resides in India. He has invented a unique device that he wants
many countries to benefit from. He can file for a patent at the PCT Regional Office in
his country. Once the international phase of his application is over, he can start the
process to register his patent under the national phase. During the national phase, he
has to individually file for registrations in countries that he wants to register.
What happens to my application in the national phase?
Once you have entered the national phase, the national or regional patent Offices
concerned begin determining whether they will grant you a patent. Any examination
which these Offices may undertake should be made more accessible by the PCT
international search report and the written opinion and even more by an international
preliminary examination report.
How do I enter the national phase?
Whether you use an earlier-filed patent application to support priority for the filing of
the PCT Application (as discussed above), or you file an international application
without a previous direct filing, you will ultimately need to enter into what is called
the national phase in every country where you wish to ultimately obtain a patent. It is
only after you have decided whether, and in respect of which States, you wish to
proceed further with your international application that you must fulfil the
requirements for entry into the national phase. These requirements include paying
national fees and, in some cases, filing translations of the application. These steps
must be taken, in relation to the majority of PCT Contracting States’ patent Offices,
before the end of the 30th month from the priority date. There may also be other
requirements in connection with the entry into the national phase – for example, the
appointment of local agents.
What are the costs associated with the filing and processing of an international
application under the PCT? What are the costs for entering the national phase?
PCT applicants generally pay three types of fees when they file their international
applications:
a. an international filing fee of 1,330 Swiss francs,
b. a search fee which can vary from approximately 150 to 2,000 Swiss francs
depending on the ISA chosen, and
c. a small transmittal fee which varies depending on the receiving Office.
For example, to file a patent in India, the cost to be incurred is as follows:
a. International filing fee of 1,363 USD
b. The search fee of 2,500 INR
c. A transmittal fee of 17,600 INR
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PCT flow chart
In what languages can an international patent application be filed?
An international patent application can be file in any language which the receiving
Office accepts. Suppose you file your application in a language that the ISA does not
accept to carry out the international search. In that case, you will be required to
furnish a translation of the application for an international search. Receiving Offices
are, however, obliged to accept filings in at least one language, which is both a
language accepted by the competent ISA that is to carry out the international search
and a publication language, that is, one of the languages in which international patent
applications are published (Arabic, Chinese,English,French,German, Japanese,
Korean, Portuguese, Russian and Spanish).Therefore always have the option of filing
your international patent application in at least one language from which no
translation is required for either PCT international search or publication purposes.
What is a PCT international search?
A PCT international search is a high-quality search of the relevant patent documents
and other technical literature in those languages in which most patent applications are
filed (Chinese, English, German and Japanese, and in some instances, French,
Korean, Russian and Spanish). The high quality of the search is assured by the
standards prescribed in the PCT for the documentation to be consulted and by the
qualified staff and uniform search methods of the ISAs, all experienced patent
Offices. The results are published in an international search report and a written
opinion of the ISA on the potential patentability of your invention.
The PCT Contracting States has appointed the following as International Searching
Authorities (ISAs): The national Offices of ● Australia, ● Austria, ● Brazil, ●
Canada, ● China, ● Chile, ● Egypt, ● Finland, ● India, ● Israel, ● Japan, ● the
Republic of Korea, ● the Russian Federation, ● Spain, ● Sweden, ● Ukraine, ● the
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A TEXTBOOK OF INTELLECTUAL ROPERTY RIGHTS
A TEXTBOOK OF INTELLECTUAL ROPERTY RIGHTS
A TEXTBOOK OF INTELLECTUAL ROPERTY RIGHTS
A TEXTBOOK OF INTELLECTUAL ROPERTY RIGHTS
A TEXTBOOK OF INTELLECTUAL ROPERTY RIGHTS
A TEXTBOOK OF INTELLECTUAL ROPERTY RIGHTS
A TEXTBOOK OF INTELLECTUAL ROPERTY RIGHTS
A TEXTBOOK OF INTELLECTUAL ROPERTY RIGHTS
A TEXTBOOK OF INTELLECTUAL ROPERTY RIGHTS

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A TEXTBOOK OF INTELLECTUAL ROPERTY RIGHTS

  • 1. 1 A TEXTBOOK OF INTELLECTUAL ROPERTY RIGHTS Dr. M. Geethavani, M. Pharm, Ph.D Professor & Head Pharmaceuical Chemistry Mr. Ramakrishna C, M Pharm
  • 2. 2 INTELLECTUAL PROPERTY RIGHTS IPR is protecting knowledge in the form of legal rights. It is one kind of intangible property and has commercial value. It is a property raised from the creativity of the human mind, intellect, and creative ideas. Property is divided into two types tangible and intangible. Tangible property is movable like a car and immovable like a building. Intangible means we cannot see but can feel like intellectual property, which divides into industrial related (patents, trademarks, designs etc.) and copyright-related INTRODUCTION Intellectual property (IP) pertains to any original creation of the human intellect, such as artistic, literary, technical, or scientific creation. Intellectual property rights (IPR) refer to the legal rights given to the inventor or creator to protect his invention or creation for a specific time. These legal rights confer an exclusive right to the inventor/creator or his assignee to utilize his invention/creation for a given time fully. It is very well settled that IP plays a vital role in the modern economy. It has also been conclusively established that the intellectual labour associated with the innovation should be given due importance so that public good emanates from it. There has been a quantum jump in research and development (R&D) costs with an associated jump in investments required for putting new technology in the marketplace. The stakes of the developers of technology have become very high. Hence, the need to protect the knowledge from unlawful use has become expedient, at least for a period, that would ensure recovery of the R&D and other associated costs and adequate profits for continuous investments in R&D. IPR is a robust tool to protect investments, time, money, effort invested by the inventor/creator of an IP since it grants the inventor/creator an exclusive right for a certain time for the use of his invention/creation. Thus IPR, in this way, aids the economic development of a country by promoting healthy competition and encouraging industrial development and economic growth. Need for IPR IP protects from infringement and Saves from unauthorized use IP contributes enormously to our national and state economies. Many industries across our economy rely on the adequate enforcement of their patent, trademarks and copyrights, while consumers use IP to ensure they are purchasing safe, guaranteed products. Without the protection of ideas, businesses and individuals would not reap the full benefits of their inventions and focus less on research and development.
  • 3. 3 IP accounts for 74% of US exports, which amounts to nearly $ 1 trillion. Substantial IP rights help consumers make an educated choice about their purchases' safety, reliability, and effectiveness. Nearly all the 300 WHO essential drug list that is saving, improving people's lives around the globe came from the R&D pharmaceutical industry that depends on patent protection. Innovative agricultural companies are creating new products to help farmers to produce more and better products for the world hungry while reducing the environmental impact of agriculture. IP driven discoveries in alternate energy, green technologies will help improve energy security and address climate change. Types of IPR 1.PATENTS 2.TRADE SECRETS 3.COPYRIGHTS 4.TRADEMARKS 5.GEOGRAPHICAL INDICATIONS 6.INDUSTRIAL DESIGNS 7.NEW PLANT VARIETIES (PLANT BREEDER RIGHTS) 8.LAYOUT DESIGNS OF INTEGRATED CIRCUITS (semiconductor chips) 9.TRADITIONAL KNOWLEDGE 10.BIOLOGICAL DIVERSITY
  • 4. 4 These are different categories of IPR IPRs that do not fit into this classical division are termed sui generis, meaning one-of- its-kind. Such sui generis rights include those covering layout designs of semiconductor chips and plant breeders rights. Sui generis systems Sui generis is a Latin word. It means uniqueor special, leaving the sui generis system open to interpretation. Sui generis offers a unique type of intellectual property right (IPR), which is different from the classical IPR, as is the case with the patent. All sui generis models that could be tailored to the specific needs and circumstances of the Members are legally recognized systems. The plant varieties constitute the principal means of production and growth in agricultural productivity. It is also recognized that the specific needs and circumstances of agriculture in each country vary. In this respect, the differences between the developing and the developed countries are extensive in several aspects. Therefore, it was evident that a sui generis system of protection appropriate for a developing country may require specific modifications in another developing country, and these systems may not even be relevant to a developed country. These differences in ground realities and perceptions have contributed to the raging controversy on the sui generis system. The significance of traditional knowledge Traditional knowledge (TK) is integral to the identity of most local communities. It is a vital constituent of a community social and physical environment, and, as such, its preservation is of paramount importance. Attempts to exploit TK for industrial or commercial benefit can lead to misappropriation and prejudice the interests of its rightful custodians. In the face of such risks, there is a need to develop ways and means to protect and nurture TK for sustainable development in line with the interests of TK holders. The preservation, protection, and promotion of local communities' TK- based innovations and practices are crucial for developing countries. Their rich endowment of TK and biodiversity plays a critical role in their health care, food security, culture, religion, identity, environment, trade, and development. However, this valuable asset is under threat in many parts of the world. There are concerns that this knowledge is being used and patented by third parties without the prior informed consent of TK holders. Few, if any, of the derived benefits are shared with the communities in which this knowledge originated and existed. Such concerns have pushed TK to the forefront of the international agenda, triggering a lively debate about ways to preserve, protect, further develop and sustainably use TK. Documenting and digitizing TK-related information in the form of a TKDL proves to be an effective means of preserving TK and preventing its misappropriation by third parties. India is a pioneer in this field. Sui Generis Systems in The World No country has put a sui generis system in place. Most are content using patents and the International Union for Protection of New Plant Varieties (UPOV) to protect their genetic resources. Kenya and Malawi are making efforts to establish sui generis systems. Many other countries have been proactive in the debate attempting to link
  • 5. 5 the objectives of Access and Benefit-sharing (ABS) as contained in the Convention on Biological Diversity (CBD) to Trade-Related Aspects of Intellectual Property Rights (TRIPS). They are fighting for a modification of TRIPS to allow them to control access to genetic resources and get some benefits from them. Situation In India India has not brought any TK-specific regime, but laws adopted to give effect to its obligations under the TRIPS, CBD and ITPGRFA have reiterated India‘s stand-in different intergovernmental bodies working on the protection of TK. India has adopted three companion legislation on IPRs, plant varieties, and biodiversity: the Patent‘s (Amendment) Act, 2005 (effective from 1January 2005); the protection of plant varieties and farmers rights Act, 2001 (PPVFR Act), and the Biological Diversity Act, 2002. There are linkages between these three pieces of legislation and some over-lapping. Whereas the Patents Act grants patents on Biotechnology, the plant variety protection law provides a sui generis regime on plant breeder‘s rights (PBRs). The Biological Diversity Act provides a mechanism to protect and share PGRs. The Patents (Amendment) Act The Patents (Amendment) Act, 2005 has made Biotechnological processes patentable. Microorganisms are patentable, but plants and animals in whole or any part thereof, including seeds, varieties, and species, and essentially biological processes for propagating plants and animals are not patentable. It incorporates provisions for protecting biodiversity and traditional knowledge by refusing to grant a patent or revoking a patent if the application wrongfully mentions the place of origin of the biological material for the invention. Failure of disclosure is also a ground for opposition to a patent. Furthermore, an invention that, in effect, is traditional knowledge or aggregation or duplication of the known properties of the traditionally known components is non-patentable. However, it is often difficult to check the unscrupulous patent of TK because of a lack of documentation and validation. Protection of Plant Varieties and Farmer‘s Rights Act (PPVFR Act), 2001 When India initiated this legislative process in 1993, the first draft appeared to have more similarities with UPOV 1978 Act. This draft encountered severe opposition and protest from farmers, nongovernmental organizations led by the Gene Campaign, civil society, and Parliamentarians. A dialogue on this legislation organized at the M.S.Swaminathan Research Foundation, Chennai, led to the development of another draft model incorporating equitable PBR, farmers‘ rights, recognition of farmer as the cultivator, conserver and breeder with entitlement to protect farmers‘ varieties, new concepts such as benefit-sharing, creation of national gene fund for promoting conservation of agro-biodiversity by farmers. Further several interactions with farmers, NGOs, and other interested parties, the draft bill was modified to suit the national agricultural scenario with checks and breaks to minimize the monopolistic role of multinational corporations while encouraging their partnership in plant breeding. The draft Bill was subsequently referred to a Joint Select Committee of Parliamentarians headed by Shri. Sahib Singh Varma. The enacted Protection of Plant
  • 6. 6 Varieties and Farmers‘ Rights Act, 2001, is notable and distinct from the UPOV Acts in several respects. It meets all crucial elements to make it an effective sui generis system of IPR. Some of the features are unique with no parallel in the protection of plant varieties. For this reason, there is also the possibility that a few of the ideological features may encounter specific practical difficulties during their implementation. These problems, however, are not insurmountable with motivated implementation agencies and willingness for timely review. The Biological Diversity Act, 2002 This application is more explicit in its approach towards TK. It contains elaborate provisions on benefit-sharing but is a week about the participation of communities in decision making. However, no attempt has been made to define TK or Communities. The main focus of the Act is to regulate access to GR and associated knowledge by foreign individuals, institutions or companies to secure equitable sharing of benefits arising out of the use of these resources with the local people. To protect the knowledge of local communities biodiversity. To address the problem of Bio-Piracy, the Act has elaborate provisions to grant access to biological resources by non- resident Indians, foreign individuals, etc., who can obtain any biological resources occurring in India or knowledge associated with it. IPR in India – Genesis and development Intellectual Property Right (IPR) in India was imported from thewest. The history of IPR in India is distinctly divided into pre-independence and post-independence phases. The post-independence phase witnessed tremendous changes in the postTRIPs (WTO) era. The time to time transformation and amendment in IPR laws to ensure the inventor‘s interest is evident throughout the development of IPRs in India. The Indian Trade and Merchandise Marks Act 1884 was the 1st Indian Law regarding IPR. The 1st Indian Patent Law was enacted in 1856, followed by a series of Acts being passed. They are the Indian Patents and Designs Act in 1911 and the Indian Copyright Act in 1914. Indian Trade and Merchandise Marks Act and IndianCopyright Act were replaced by Trade and Merchandise Marks Act 1958 and Copyright Act 1957. In 1948. The Indian Government appointed the 1st committee to review the prevailing Patents and Designs legislation. In 1957, the Government appointed Justice RajagobalaAyyangar Committee (RAC) to revise the Patent Law. RajagobalaAyyangar Committeesubmitted its report in 1959. The report tried to balance the constitutional guarantee of economic and social justice enshrined in the constitution's preamble. This report provided the processfor Patenting of drugs. This report outlined the policy behind the Indian Patent system. The theory upon which the patent system is based, i.e., an opportunity to acquire exclusive rights in an invention, stimulates the technical process in four ways. 1. Encourages research and invention. 2. Induces an inventor to disclose his discoveries. 3. Offers award for the expenses of developing inventions.
  • 7. 7 4. Provides an inducement to invest capital in new lines of production which might not appear probable. Based on the RajagobalaAyyangar Committee report, a Bill was introduced in 1965, and the bill was passed in the Lok Sabha. However, it lapsed in the Rajya Sabha and once again lapsed in Lok Sabha in the year 1966 due to the dissolution of Lok Sabha. However, it was reintroduced in 1967 and passed in 1970; the draft rules wereincorporated in Patent Act and passed in 1971.The following steps are being suggested with particularreference to the situation in India regarding IPR in the national policymaking Intellectual Property Rights and its Development in India Intellectual Property Rights are patents, copyrights, trademarks, geographical indicators, protection ofundisclosed information, layout designs of integrated circuits, industrial designs and traditional knowledgerecognized by the Trade-Related Intellectual Property Rights agreement (TRIPS) and governed by the WTO (World Trading Organization). In the present book, development of Intellectual Property Law in India, Evaluation of an International Intellectual Property Regime, New Dimensions and issues for resolution, the Importance of IPR in developing countries and its impact are discussed in brief. Constitute a single integrated window National IPR commission to deal with IPR policy issues. Integrate national technology planning with IPR and trends in the international technology trade. Implement a formal national IPR literacy mission. Set up IPR training institutes to prepare technically qualified attorneys. Introduce an enabling national taxation policy to encourageinnovation, the building of IPR portfolio and its utilization intechnology transfer and trade. Urgently modernize the IPR administrative structures in the country. Improve infrastructure for access and effective use of IPR information. There is an urgent need to harmonize the patent. classification system to ease and optimize processes in patent searching. Re-structure the judiciary and enforcement machinery for professionals and speedy response to IPR issues. Training of corporate and institutional managers on effectivemanagement of IPR. Standardize models for valuation and audit of IPR. Evolve national taxation policies of development. 7 objectives of the new IPR Policy, 2016:
  • 8. 8 1. To increase public awareness about IPR and their economic, social and cultural benefits. 2. To stimulate the creation of IPR in the country. 3. To create a strong legal and legislative framework around IPR. 4. To modernize administration and management of IPR. 5. To promote commercialization of IPR. 6. To strengthen enforcement and adjudication mechanism around IPR. 7. To expand Human Capital Development. Key Features of the new IPR Policy, 2016: 1. Broadening the Ambit:The new Policy covers music, films and industrial drawings by copyright. 2. Process Time Reduction:Reduction in time taken to clear the backlog of IP application from current 5-7 years to 18 months by March 2018. Reduction in approval of trademark applications from a current average of 13 months to one month by 2018. 3. Conflict Resolution:Designate DIPP (Department of Industrial Policy and Promotion) as a nodal agency for coordination, guidance and regulatory works. 4. Policy Review: To review the policy after every five years in consultation with stakeholders. 5. Domestic IPR facilitation:To promote Research and Development Some Essential Examples of IPR Abduction of turmeric: Thus, the war began: In May 1995, the US Patent Office granted the University of Mississippi Medical Center a patent [#5,401,504] to use Turmeric in Wound Healing. The patent was promptly challenged by Dr R A Mashelkar, an Indian scientist who has done much to awaken India to Intellectual Property Rights issues. After four months of submissions, it was established that turmeric as a healing agent was well- known in India. For some centuries, one is tempted to add. The patent was annulled. However, there were more battles ahead. In 1996, Vandana Shiva --an icon for Third World Knowledge Rights began to challenge the patent granted to the firm of W.R.Grace& Co by the European Patent Office, Munich forfungicidal uses of neem oil'. Now, it so happens that neem is as much a sacred object in India as turmeric is. The case of basmati rice patent
  • 9. 9 The facts of this case are that in September 1997, Ricetec was granted a patent for allegedly novel basmati lines and grains which were created from the crossing of the basmati germplasm (of Pakistani origin) taken from an ex-situ gene bank in the US with American long-grained variety of rice. Ricetec has claimed that the new varieties have the same or better aroma, grain length and other characteristics than the original basmati variety grown in India and Pakistan and can be grown successfully in specified geographical areas in North America. This came to the notice of the government of India in February 1998, and an Inter-Ministerial Committee was set up under the Secretary, Department of Industrial Development, to examine this issue. The Agricultural Export Development Agency (APEDA) of the Ministry of Commerce in the government of India has been entrusted with the task of representing the rice exporters in any re-examination of the patent in the US Patent and Trademarks Office (USPTO), if it is decided that there are sufficient grounds for the eventual revocation of the patent. The Council for Scientific and Industrial Research (CSIR) successfully opposed and obtained the revocation of a patent on turmeric in 1997 in the USPTO is assisting in this exercise. In 1996-97, India exported about 490,000 MTs of basmati rice valued at about $ 358 million, constituting over 60 per cent of the value of India's total exports of rice. Irrespective of what is decided in the USPTO on revoking the basmati patent, can Ricetec or any other company use the name basmati to sell rice that does not originate from India or Pakistan. In other words, can basmati be protected as a geographical indication? There is no unequivocal answer as Ricetec has claimed that basmati is a generic name denoting a variety of rice. Moreover, if Ricetec or any other company sells rice similar to basmati and labels or advertises this as 'American made basmati type rice' or 'basmati style rice', with a clear indication that the product originates from the US, there is no deception of the public even while the reputation and goodwill attached to the name basmati is diluted. The TRIPS Agreement accords absolute protection against the use of geographical indications with the words 'type', 'style', 'kind' etc., only to wines and spirits and to no other commodity. In addition, if the Courts in the US finally rule that the name basmati is already generic, as it is understood to denote a variety of rice not necessarily associated with any geographical region, there would be no protection available for it. This is not yet tested in the Courts in the US. However, APEDA opposes the trademark 'Texmati' by Ricetec in the 20 UK because it would deceive the consumers as rice originating from India and Pakistan. The UK's GAFTA strictly enforces its labelling requirements where `basmati' can only be used for rice originating from India, and Pakistan should help India's case. As of date, the case has not yet been finally decided in the UK Trademarks Registry. Some have opined that taking a patent derived from the basmati germplasm amounts to biopiracy by Ricetec. However, it must be noted that the germplasm was taken from an ex-situ collection in the US and that the CBD had skirted the issue of ownership of genetic resources in international collections. Thus, there is no prohibition on the exchange or use of such germplasm in the current international law, even if this is for commercial purposes.
  • 10. 10 Darjeeling tea case the unauthorized use and registration of Darjeeling and Darjeeling logo by Japanese companies already registered in Japan by the tea board of India and unauthorised use and attempted registration of the words Darjeeling and Darjeeling logo by some other developed countries like the united states, united kingdom, France Russia. So efforts made by the tea board to ensure the supply of genuine Darjeeling tea and legal protection at the domestic level like CTM registration (certification trademarks) for Darjeeling logo and word Darjeeling under the trademarks act 1999 and GI registration in India applied by tea board of India in order to provide legal protection in India. Many hurdles, challenges, settlements, disputes have crossed the tea board of India in order to protect the word Darjeeling and Darjeeling logo. IPR CASE BETWEEN INDIA AND USA ON NEEM Neem is a tropical evergreen tree native to India.It is known as “the village pharmacy” because of its versatile use for more than 4000 years.Biopiracy is the theft of genetic materials by the process of patenting.Once patented, the patent owner can easily prevent competitors from producing the product, occasionally even interfering with the lifestyles of the community, which is the source of the patented product.In such cases, farmer and community livelihoods are threatened. The neem campaign consisted of a group of NGO’s and individuals. This was done to mobilize worldwide support to protect indigenous knowledge systems.The neem patent became the first case to challenge US and European patents on the ground of biopiracy.PROBLEM: In 1971, us timber importer Robert Larson observed the tree’s usefulness in India and began importing neem seeds to Wisconsin. He then conducted safety and performance tests on it and sold the patent for the product to the MNC, W R Grace and Co. Since 1985, over a dozen US patents have been taken out by the US and Japanese firms on the formulae for stable neem-based solutions, emulsions, etc. It also began suing Indian companies for making the emulsion. DISPUTE:The controversy about who has the right over the neem tree raised may question Indian companies claim that what the US companies are calling inventions is stealing and pirating the indigenous practices and knowledge of its people. Even the green party of Europe supported this claim.US, on the other hand, stated that what they are doing will help the Indian economy.Another issue is whether the neem tree is patentable because it is a product of nature. The problem is that W R Grace does not have a patent on the tree but on the process of making the emulsion. CASE JUDGEMENT: On 30 September 1997EPO accepted the arguments offered by Indian scientists and rejected the order of the US patent.The Indian scientists argued that the Indians had known the medicinal properties of neem for thousands of years, and hence no other company can patent its properties.The EPO agreed to withdraw the patent in May 2000.The US also needs to change its laws that allow biopiracy.
  • 11. 11 Novartis case challenging the Indian Patent Office for Denial of its patent application for GlivecConstitutional validity of section 3(d) of Indian Patent Law,1970 Section 3(d) of the Indian Patent Act– Prevents the Grant of a Patent for New Forms of Known Substances, Unless It is demonstrated with an Increased Efficacy. Glivec Patented in 35 countries & Helpful in Chronic Myeloid Leukemia. Imatinib Mesylatein Beta Crystalline Form.  Restrain Indian Generic Pharmaceutical Manufacturers from Producing Drugs based on the Compound.  Not Compatible with the Trade-Related Aspects of Intellectual Property Rights (TRIPS) (Vague). Non- Uniform Discretionary Power on the patent controller. Glivec does not Qualify the Test of Inventionas laid down in Section 2(1)(j) and Section 2(1)(j (a)) of the Indian Patent Act.  Novartis decided to stop any further Investment in R&D in India. IPR IN ABROAD Globalization and the rapid proliferation of technology have elevated the importance of IPR protection for small and medium enterprises. The intangible nature of the intellectual property and worldwide lack of standard practices create challenges for countries businesses wishing to protect their inventions, brands and business methods in foreign markets For example, a car might have one hundred patents associated with it in various parts and components. One patent may be all that needed to cover one product, a patented drug in the pharmaceutical industry. Some companies obtain patents to license or sell them to others, making money for their inventions without manufacturing or service anything. Other companies actively seek patents that they can purchase because they want to speed up their R&D efforts
  • 12. 12 Example: Daimler company which registered 2000 patents in 2009, pays 2600 outside inventors to use their innovations in Daimler products, so patents are the future of innovation management. Filing a patent is relatively inexpensive. Everybody can afford the filing fee, but defending a patent can be expensive. How overworked the patent examiners and often errors on granting a patent means there are often overlapping patents. We wind up in these fights. We cannot tell, courts cannot tell, a patentee cannot tell what they mean. The US government office of the United States trade representative (USTR) monitors intellectual property rights worldwide and fights IP theft because IP theft impacts 18 million Americans livelihood depends on IP protection. USTR evaluates countries and rates them according to how those countries enforce IP rights The WIPO provides a list of national IP offices and a range of services for businesses looking to protect their IP internationally. Protecting and managing your IP abroad can be very complex. If you plan to sell, distribute, manufacture, or source your products abroad, you should seek help from an IP attorney or professional IP advisor. According to a world statistical review, China, America, Japan has strong GDP and R&D and they primary patent filers. In 2007, 59.2% of patents were filed in these three countries. In 2007 3.3 million trademark applications are filed across the world, and significant filers are IP offices of china and the united states of America. In 2007 the worldwide industrial design application filed was 621000 applications among 43.1% applications filed by China's IP offices. The patent applications filed through the Patent Cooperation Treaty (PCT) in 2008 were approximately 163,600.Globally some companies are topped like Huawei Technology (China), Panasonic Corporation (Japan) and Philips (Netherlands) were ranked first,second and third in patent and PCT filings. In university sector. The University of California filed 345 PCT applications. Tokyo, Seoul National, Imperial College and Osaka are the four non-US universities in the top 20 list. China, Germany, Japan, the Republic of Korea and the US accounted for around 70% of world R&D expenditure, and these countries are the top five ranked countries for resident patent filings. If we talk about the comparison of India and China, Domestic applicants file actively in China: 62 percent in China whereas 20 percent in India. Bigger Economy in China in comparison to India.Better Infrastructure for Patent filing in China. Better IP awareness among individuals and Universities. Easy to get a grant in China. Better enforcement of IP Laws in China. China to be the leading country with the highest number of Patents filed in 2019, followed by the USA. China also leads in the number of Trademarks filed. India is ranked 10th globally in the number of Patents filed and 8th in terms of trademarks.
  • 13. 13 Guang Dong Oppo Mobile (1,927), Boe Technology (1,864), Ericsson (1,698), Ping An Technology (1,691), Robert Bosch Corporation (1,687) and LG Electronics (1,646). The list is based on applications filed through the WIPO’s Patent Cooperation Treaty (PCT) system. India fares in applying for trademarks as well, having made up for just 0.7% of global filings in 2019, the WIPO data showed. The country is nearly absent in industrial designs, having filed for only three designs, against 21,807 globally. India’s R&D spending remained constant at around 0.6-0.7% of its GDP, way below the expenditure level of countries like Israel (4.3%), South Korea (4.2%), the US (2.8%) and China (2.1%). Developing countries have fewer patents, trademarks, and industrial designs due to inadequate R&D and a lack of awareness about the importance of filing such applications. INTERNATIONAL ORGANIZATIONS, AGENCIES AND TREATIES Some several international organizations and agencies promote the use and protection of intellectual property. Although these organizations are discussed in more detail in the chapters to follow, a brief introduction may be helpful: International Trademark Association (INTA) is a not-for-profit international association composed chiefly of trademark owners and practitioners. It is a global association. Trademark owners and professionals dedicated in supporting trademarks and related IP in order to protect consumers and to promote fair and effective commerce. More than 4000 (Present 6500 member) companies and law firms in more than 150 (Present 190 countries) countries belong to INTA and others interested in promoting trademarks. INTA offers various educational seminars and publications, including many valuable materials available at no cost on the Internet (see INTA‘s home page at http://www.inta.org). INTA members have collectively contributed almost US $ 12 trillion to global GDP annually. INTA undertakes advocacy [active support] work throughout the world to advance trademarks and offers educational programs and informational and legal resources of global interest. Its headquarters in New York City, INTA also has offices in Brussels, Shanghai, Washington DC, and Geneva and Mumbai. This association was founded in 1878 by 17 merchants and manufacturers who saw a need for an organization. The INTA is formed to protect and promote trademark owners' rights, secure applicable legislation (the process of making laws), and give aid and encouragement to all efforts for the advancement and observance of trademark rights. World Intellectual Property Organization (WIPO) was founded in 1883 and is a specialized agency of the United Nations whose purposes are to promote intellectual property throughout the world and administer 23 treaties (Present 26 treaties) dealing with intellectual property. WIPO is one of the 17 specialized agencies of the United Nations. It was created in 1967 to encourage creative activity, to promote the protection of Intellectual Property throughout the world. More than 175 (Present 188)
  • 14. 14 nations are members of WIPO. Its headquarters in Geneva, Switzerland, current Director-General of WIPO, Francis Gurry, took charge on October 1, 2008. The predecessor to WIPO was the BIRPI [Bureaux for the Protection of Intellectual Property] it was established in 1893. WIPO was formally created by the convention (meeting) establishing the world intellectual property organization, which entered into force on April 26 1970. Berne Convention for the Protection of Literary and Artistic Works (the Berne Convention) An International copyright treaty called the convention for the protection of Literary and Artistic Works signed at Berne, Switzerland, in 1886 under the leadership of Victor Hugo to protect literary and artistic works. It has more than 145 member nations. The United States became a party to the Berne Convention in 1989. The Berne Convention is administered by WIPO and is based on the precept that each member nation must treat nation must treat other member countries as its nationals for copyright purposes (the principle of ―nation treatment‖). In addition to establishing a system of equal treatment that internationalized copyright amongst signatories, the agreement also required member states to provide strong minimum standards for copyrights law. It was influenced by the French ―right of the author‖. Madrid Protocol It is a legal basis is the multilateral treaties Madrid (it is a city situated in Spain) Agreement concerning the International Registration of Marks of 1891 and the protocol relating to the Madrid Agreement 1989. The Madrid system provides a centrally administered system of obtaining a bundle of trademark registration in a separate jurisdiction. The protocol is a filing treaty and not a substantive harmonization treaty. It provides a cost-effective and efficient way for the trademark holder. It came into existence in 1996. It allows trademark protection for more than sixty countries, including all 25 countries of the European Union. Paris Convention, The Paris Convention for the protection of Industrial Property, signed in Paris, France, on 20 March 1883, was one of the first Intellectual Property treaties, after a diplomatic conference in Paris, France, on 20 March 1883 by Eleven (11) countries. According to Articles 2 and 3 of this treaty, juristic (one who has thorough knowledge and experience of law) and natural persons who are either national or domiciled in a state party to the convention. The convention is currently still in force. The substantive provisions of the convention fall into three main categories: National Treatment, Priority rights and Common Rules. An applicant for a trademark has six months after applyingto any of the more than 160 member nations to file a corresponding application in any of the other member countries of the Paris Convention and obtain the benefits of the first filing date. Similar priority is afforded for utility patent applications, although the priority period is one year rather than six months. WIPO administers the Paris Convention. North American Free Trade Agreement (NAFTA) came into effect on January 1, 1994, and is adhered to by the United States, Canada, and Mexico. The NAFTA resulted in some changes to U.S. trademark law, primarily about marks that include geographical terms. The NAFTA was built on the success of the Canada-U.S Free Trade Agreement and provided a complement to Canada‘s efforts through the WTO agreements by making deeper commitments in some key areas. This agreement has
  • 15. 15 brought economic growth and rising standards of living for people in all three countries. General Agreement on Tariffs and Trade (GATT) was concluded in 1994 and is adhered to by most of the major industrialized nations in the world. The most significant changes to U.S intellectual property law from GATT are that non-use of a trademark for three years creates a presumption that the mark has been abandoned and that the duration of a utility patent is now twenty years from the filing date of the application (rather than seventeen years from the date the patent issued, as was previously the case) Various International Treaties There are different subject matters of intellectual property like Patents, Copyright, Trademarks, Industrial design, Plant Varieties etc. The need for protection in these different subjects arose in different periods. These are reflected in different treaties. Under the aegis of WTO, Agreement on TRIPS remains the most influential, comprehensive, and inclusive of all. Other treaties are covered here for background information. 1. Paris Convention for Industrial Property, 1883 –Since it deals only with Industrial property, it covered only Patents and Trademarks. It was among the first treaties to recognize various principles of international trade like National Treatment, Right of Priority, Common rules etc. 2. Bern convention for literary and artistic works, 1886 – It provided for the copyright system. It does not provide for any formality to claim protection. Protection is automatically accorded to any creation, provided work is original and other conditions under the treaty are fulfilled. It means that your work, if original, is already protected. You can claim that you have copyright. 3. Madrid Agreement, 1881 – Governs the international recognition of trademarks. This agreement made international fillings easy and cheap. 4. Patent co-operation treaty, 1970 – It was earlier not possible for an entity to claim protection in different countries by a single application. This was made possible as it aimed for co-operation and was open for all parties to the Paris convention. 5. Budapest Treaty of 1980 – It made possible patenting for micro-organisms. The claimant is required to deposit his invention on micro-organisms with an Authority – ‘International depository of Micro-Organisms’ under WIPO. He shall make all the adequate disclosures. 6. Trademark Law Treaty, 1994 Harmonized administrative procedures and introduced service marksin the ambit of trademarks. Earlier trademarks were accorded only to goods. 7. The Hague Agreement concerning the International Deposit of Industrial Design1925. It created the International Design Bureau of WIPO. 8. International Union for protection of new plant varieties, 1961 This provides breeders and farmers with the right to new plant varieties.
  • 16. 16 9. Agreement on Trade-Related Aspects of Intellectual Property Itis a landmark and most comprehensive treaty on Intellectual property. While earlier treaties subject matters were specific, TRIPS deals with eight kinds of property rights – Patents, Trademarks, trade dress, Copyrights, Industrial Designs, Plant Varieties, Integrated Circuits and layouts. Geographical Indication. Further, almost all countries are a TRIP party. In earlier treaties, only limited countries participated. It also provides an enforcement mechanism that was not available in WIPO treaties. It mandated all the member countries to make their domestic laws complaints to TRIPS. India passed specific laws and amended others. India’s IPR regime now stands complaint fully to TRIPS. E.g., India amended patent law in 2005 to provide product patent protection. Earlier protection was available only to processes. TRIPS was the result of discussions held in the Uruguay Round, which led to the formation of WTO. This treaty is an offshoot of the General Agreement on Trade in Goods (GATT). This treaty provided a robust Dispute Resolution Mechanism and stringent penal provisions under the auspices of WTO. Further, every treaty under WTO has based some principle which is 1. National Treatment – No foreign products, once they enter domestic territories, shall be discriminated against in any manner. This also applies to intellectual property. Members must accord similar treatment to foreign creations, as they do to domestic ones. 2. Most Favoured Nation – If a member provides some privilege, favourable treatment or exemption to another country or group, other members must get similarly favourable treatment. 3. Right to priority treatment – If a similar patent application has been filed in two different countries, then the prior applicant has the right to the patent. 4. Concept of Minimum Standards – This treaty provides a minimum level of protection that every member should provide to intellectual property. Members have the discretion to provide more protection than minimum standards. 5. Universal Copyright Convention, 1952. UNESCO administers this convention. This exists simultaneously with Bern Convention. This treaty provides for procedural formalities for filing and recognition of copyright. As the Bern convention provides for an automatic route to copyright, this treaty has lost its relevance International copyright treaties Berne convention 1886, for protection of literary and artistic works Rome convention 1961, for the protection of performers and producers of phonograms and broadcasting organizations. Geneva convention 1971, for the protection of producers of phonograms against unauthorized duplication of their phonograms
  • 17. 17 Brussels convention 1974, related to the distribution of programme carrying signals transmitted by satellite WIPO copyright treaty 1996 WIPO performances and phonograms treaty 1996 Current IP Laws in India Copyright Copyright Act of 1957, copyright rules 1958 Amendments to copyright 2012 Customs Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 Designs The Designs Act, 2000 The Design (Amendment) Rules, 2008 Geographical Indications Geographical Indications of Goods (Registration and Protection) Act, 1999 Geographical Indications of Goods (Registration and Protection) Rules, 2002 Geographical Indications of Goods (Registration and Protection) Rules, 2020 Information Technology The Information Technology Act, 2000 The Information Technology Rules, 2000 Cyber Regulations Appellate Tribunal (Procedure) Rules, 2000 Patents The Patents Act, 1970 The Patents (Amendment) Act, 2005 The Patents Rules, 2003 The Patents (Amendment) Rules, 2006 The Patents (Amendment) Rules, 2020 Plant Plant Varieties Protection and Farmers' Rights Act, 2001
  • 18. 18 Semiconductor and Integrated Circuits Semiconductor Integrated Circuits Layout Design Act 2000 Rules for the Semiconductor Integrated Circuits Layout Design Act 2000 Trademarks The Trade Marks Act, 1999 The Trade Marks Rules, 2002 The trademarks (amendment) act 2010 Biological diversity Biological diversity act 2002 PATENTS A patent for an invention is granting a property right to the inventor issued by the Indian patentoffice. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in India or, in exceptional cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. Indian patent grants are effective only within India, Indian territories, Under certain circumstances, patent term extensions or adjustments may be available. The right conferred by the patent grant is, in the language of the statute and of the grant itself, the right to exclude others from making, using, offering for sale, or selling‖ the invention in India or importing‖ the invention into India. What is granted is not the right to make, use, offer for sale, sell or import, but to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without the aid of the IPO. Huawei, Mitsubishi Electric, Samsung and Qualcomm filed more international patent applications each than the whole of India in 2019, showed the latest data compiled by the Geneva-based World Intellectual Property Organization (WIPO). India is markedly less spending on research and development (R&D).India filed only 2,053 patents applications in 2019, accounting for fewer than 1% of the global filings (see
  • 19. 19 chart). In contrast, Huawei alone filed 4,411 applications, followed by Mitsubishi Electric (2,661), Samsung (2,334) and Qualcomm (2,127). The essential purpose of these amendments is to bring in efficiency in the procedures followed for application, review, and disposal of the patents filed. Modernization of the IP offices where-in technology is augmented for IT-enabled IP offices (e-filing, paperless electronic process, etc.). Removal of backlog and speedy examination & disposal of applications is cited for the augmentation of Manpower Patentable: A new product or process involving an inventive step, capable of making use in industry. It means the invention to be patentable should be technical and should meet the following criteria i) Novelty: The matter disclosed in the specification is not published in India or elsewhere before filing the patent application in India. ii) Inventive Step: The invention is not obvious to a person skilled in the art in the light of the prior publication/knowledge/ document. iii) Industrially applicable: Invention should possess utility to be made or used in industry. Non-patentable: The following are non-Patentable inventions within the meaning of the act: (a) an invention that is frivolous or which claims anything obviously contrary to well established natural laws (b) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or the environment (c) the mere discovery of a scientific principle or the formulation of an abstract theory (or discovery of any living thing or non-living substances occurring in nature) (d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or mere new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant; Explanation- For this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties about efficacy.
  • 20. 20 (e) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance (f) the mere arrangement or re-arrangement or duplication of known devices, each is functioning independently of one another in a known way; (g) a method of agriculture or horticulture. (h) any process for the medicinal, surgical, curative, prophylactic,diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products. (i) plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for producing or propagating plants and animals. (j) a mathematical or business method or a computer programme per se or algorithms. (k) a literary, dramatic, musical or artistic work or any other aesthetic creation, including cinematographic works and television productions. (I) a mere scheme or rule or method of performing a mental act or method of playing a game. (m) a presentation of information. (n) topography of integrated circuits. (o) an invention that, in effect, is traditional knowledge or aggregation or duplication of known properties of a traditionally known component or component. (p) Inventions relating to atomic energy and the inventions prejudicial to the interest of the security of India. Product and process patents The issue relating to protecting a product and protecting a process is very relevant only in the case of inventions in the chemical field. The basic philosophy behind the grant of a patent for the preparation of a product is that the said product can be manufactured by a new, different and innovative method. When one refers to a patent as a product patent, he has developed a new product. Similarly, when one refers to a patent as a process patent, he has developed a new and improved process for producing a known product. In the case of a product patent, one will have claims (defining the area of the legal protection) for the new product and, if he desires, can also have claims for the process for preparing the said product. Of course, if he does not claim the process is mandatory that the process for the preparation of the new product should be disclosed in the text of the document (specification). Whereas in the case of a process patent, one can have only claims for the process and not for the product, as the product prepared by the said process is already known, and therefore, there is no novelty in such a product. With the coming into force of the product patent regime in India, only those new products on the date of filing of the application for a
  • 21. 21 patent for that product will be patentable and not others. The exception is the WTO applications (meaning those applications claiming new pharmaceutical, agricultural, chemical products) filed since Jan 1st1995. In other words, the products which are already known before Dec 31st 2004 (except the above said WTO applications) cannot be patented as their novelty has been lost. On the other hand, the rights in the process patent are confined to the use of that particular process of preparing the product and nothing else. Therefore, anybody else can develop an alternate process, and if it satisfies the criteria of patentability, he can secure a patent for that alternate process. In this context, it should be noted that the product obtained by the processes is already known in this case. Therefore, nobody gets protection for the said product. Hence, the commercial production of the said compound by the alternate process is possible without the fear of any infringement, even though a patent for another different process of preparing the same substance is in force in the same country. The possession of a patent confers the patentee not merely certain valuable monopoly rights and privileges but also certain obligations and duties. It is also to be noted that if the alternate process for a product developed is very efficient. The said product is beneficial having good commercial potential, the two different patent holders for the respective inventions (one for the product and another for the improved process) can come together and have a joint agreement (cross-licensing) and bring the new product to the market and share the profits amongst themselves. Such an exercise will benefit society at large in getting the fruits of the research work. Instead of hampering research and development (R&D) in developing alternative processes for a product under the product patent regime, it will enhance developmental activities. As mentioned above, in many countries, including India, the patent law excludes certain specific kinds of inventions from being patentable even though the inventions satisfy all the three essential criteria for patentability, namely, novelty, inventive step (non-obvious) & Utility. Examples of such non-patentable inventions are nuclear transformation, human beings, plants & animals etc. The types of inventions which are not patentable are stipulated in the patent legislation of the country concerned. In India, the inventions for which patents can be secured is defined in Section 2(1) (j) of the Act. The term process‖ may be defined as one or more steps or acts performed on materials/substances to produce a result (product/composition /material /substance). The process should be regarded as an artificial process or operation of an industrial nature wherein certain starting materials/substances are subjected to the process or operation to convert the starting materials/substances in such a manner to produce a new or known and useful article or substance or substance or product which is tangible. Suppose the starting materials/substances used in the process remains unaltered, and the resulting product also remains the same as the starting materials/substances. In that case, the process may not be an invention for which patent protection can be secured. What is patent of addition When an invention is patented, and if any improvements or modifications are coming up for that invention as a natural process, as a result of the feedback of the market or
  • 22. 22 industry, then the original patented product or process may be protected by the patent of addition in India. A patent of addition is granted after the grant of a patent for the main inventions. The Indian Patent Law offers protection for such improvements or modifications through Patents of Addition. Sections 54, 55 and 56 of the Indian Patents Act, 1970 deal with the law about patents of addition and the same are reproduced. Patent registration flow chart Publication of patent application in India Usually, every patent application is published after 18 months of applying and objections are invited. The patent application shall not be open to the public for eighteen months after filing or date of priority, whichever is earlier. The Controller may issue direction to prohibit or restrict such publication. In the secrecy direction, the application will be published when the secrecy directions cease to operate. The publication will include the particulars of the date of application, number of applications, name and address of the applicant and an abstract. Examination of patent application in India
  • 23. 23 An examination is taken up only if the applicant or any other interested person makes a request in the prescribed manner for such examination within 48 months from the date of filing of the patent application. If such a request is not made within the prescribed time, the patent application is treated as withdrawn. When the patent application is in respect of an invention for a chemical substance used as an intermediate in the preparation of a medicine or drug including insecticides etc. used for protection or preservation of plants, the request for examination has to be made within 12 months. or within 48 months from the date of the application, whichever is later Acceptance and Advertisement of Complete Specifications- Once the complete specification is accepted, the Controller notifies it the applicant and advertises it in the Official Gazette. From the date of advertisement of the acceptance of the complete specification and until the date of sealing of the patent, the applicant will have the like privileges and rights as if a patent for the invention had been sealed on the date of advertisement Granting of patent application in India Opposition to the Grant of Patent: Any person interested in opposing the grant of patent may give notice to the Controller of such opposition within 4 months from the date of advertisement of the acceptance on the grounds like:- 1. the invention was wrongfully obtained by the inventor/applicant. 2. the invention, as claimed in any claim of the complete specification has been anticipated in a specification filed for another patent earlier. 3- The invention claimed in any claim was publicly known/used in India before the priority date of the claim. 4- The subject of the patent is not an invention within the meaning of the Act. 5- The information furnished is false. 6- Geographical origin of biological material is not disclosed or falsely disclosed. Grant and Sealing of Patent Where the application for a patent along with complete specification has been accepted either without opposition. After the opposition, a patent shall be granted if the applicant makes a request in the prescribed manner for a grant of patent. The request has to be made within six months from the date of advertisement of the acceptance of the complete specification. The patent so granted shall be sealed with the seal of the patent office and the date of sealing of patent shall be entered in the register.
  • 24. 24 Rights Under Indian Patent Law Under section 47, a patent granted under this Act shall confer upon the patentee (a) where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India (b) where the subject matter of the patent is a process, the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India: Right to exploit the patent.: The patentee has a right to prevent third parties from exploiting the patented invention. Right to grant license: The patentee has the power to assign rights or grant licenses. Right to surrender: The patentee is given the right to surrender the patent by giving notice in the prescribed manner to the controller. Right to sue for infringement.: A patentee is given the right to institute proceeding for infringement of the patent in a district court. TRANSFER OF PATENT A patent is the exclusive property of the inventor. It hence can be transferred from the original patentee to any other person by assignment, grant of license, or operation of law. The IPA requires that an assignment, license or creation of any other interest in a patent must be in writing, clearly specifying all the terms and conditions governing the rights and obligations of the parties. This document must be registered in the prescribed manner within the prescribed time. The person getting such entitlement in a patent has to apply in writing to the Controller to register the title. Patent application process Overview of the Application Process The process of preparing, filing, and shepherding a patent application through the PTO (Patent & Trademark Office) towards issuance is called prosecution. An application may be filed by himself or herself or, as is more usual, by a 600 patent attorney or patent agents in India. Inventors file only 20% of all applications without the assistance of attorneys. The application is filled with PTO. It will be assigned to one of more than 100 patent examiners with experience in technology related to the invention who will review the application and conduct a search of patent records to ensure the application complies with the statutory requirements for patents. The
  • 25. 25 process may continue for several rounds. A Notice of Allowance will be sent to the applicant, which specifies an issue fee paid to the PTO for the patent to be granted. Individual inventors Small entity Other than small entity Application for grant of patent 1600 4000 8000 Application for grant of patent form 01 Provisional or complete specification form 02 Early publication requests can be made with form 9 Individual inventors Small entity Other than small entity Request for early publication 2500 6250 12500 Request for examination of patent form 18 Individual inventors Small entity Other than small entity Request for examination 4000 10000 20000 Refer forms and fees on government website www.ipindia.nic.in Response to the examination report (objections): the patent agent or attorney may charge a professional fee in response to objections based on the complexity of objections and the number of objections received. The fee for a response to objections varies 5000-20000 rupees depending on the complexity, subject matter and number of objections. Searching a patent A patent search or a patentability search is a search conducted in patent databases and the literature available to check whether any invention similar to your invention already exists. In other words, it evaluates your chances of getting a patent grant. Therefore, instead of going forth with the filing, if one conducts the patent search, one can get a clear idea about the invention's patentability, whether the application should be filed and the strengths and weaknesses of the invention. Patent databases: Patent databases are an excellent source for extracting patent information that cannot be carried out at a reasonable price with conventional methods. Patent databases which contain bibliographic data,abstracts, and claims, full text, indexing data, legal status data, graphical data
  • 26. 26 Search for prior art before filing patent applications •Avoid infringement, Monitor patents in a given area of technology, Monitor patents by a company, university or an individual, Locate information on a specific patent •Market analysis/statistics, Identifying technological trends, Searches for potential cooperation partners and licensors. Advantages of using onlinedatabases in acquiring patent information time efficiency cost-effectiveness comprehensiveness up-to-date information easily assessable information from your desk complete coverage on an international level Maintain a current, knowledgeable position - current intellectual property portfolio possible patent infringement competitor research make informed business decision decide future research directions Current awareness information is critical for protecting an organization’s research and marketing endeavours International Patent Classification (IPC) works as a universal classification for patents started in 1975 and periodically updated. We currently use IPC 7th Edition. Section, Class & Group. The International Patent Classification looks like this: A 02 J 1/00 A=Section 02=Group J=SubGroup 1=Class 00=SubClass A 47 J 27/09 includes the safety device on your rice cooker B 63 G 11/00 covers your various aircraft carriers US Patent Classification US Patents are classified with 400+ main classes and thousands of subclasses. 424 / 497 424= Class 497=SubClass Patent search tools FREE PAID Uspto Espacenet Depatis PAJ CIPO Many more patent office sites CASWEBDelphion Intellectual Property Network DialogGetThePatent.com IPOrganizer.com IP Search Engine Lexis-Nexis MicroPatent PATSCANQuestel Orbit Patent Database SCIFINDER Shadow Patent Office
  • 27. 27 STN SurfIP.co The Need for a Search: Patentability requires novelty and non-obviousness. The patentability search, sometimes called a novelty search A search is recommended to determine the feasibility of obtaining a patent. A novelty search is somewhat limited in scope and is designed to disclosewhether an application will be rejected based on lack of novelty orobviousness. A novelty search can usually be completed for less than 5000 rupees. If an invention is intended for immediate commercial use or sale, an additional search, call an infringement search or investigation, is often conducted concurrently with the novelty search. This novelty search is thus more expensive. Conducting a patent search is indispensable before filing a patent application. The Indian Patent Advanced Search System, InPASS, was introduced on Feb 27th, .2015. Before InPASS, IPAIRS [Indian Patent Information Retrieval System] was used to conduct a patent search in India. InPASS is an updated version of IPAIRS as it allows for a full-text search of all Indian patents and Patent Applications. Apart from this, InPASS also allows a person to conduct a patent search using Wild Cards and Boolean Operators. Now, InPASS is the Indian patent office database used to conduct an advanced patent search in India. Types of Application (global) 1.Provisional Application 2. Utility Application 3. Design Application 4.Plant Application 5.Continuation Application 6.PCT (Patent Cooperation Treaty) Application 7.Divisional Application
  • 28. 28 For India required applications Ordinary Applications Convention Application Patent of Addition Application Divisional Applications PCT Application Drafting of a patent. Patent drafting, besides the most crucial document in the entire patent registration process, is also considered to be one of the most complex techno-legal documents. The patent drafting/writing specification contains the aspects of the invention such as field of invention, background, summary, detailed description, patent drawings, abstract and patent claims for which protection is sought. Two types of patent specifications can be drafted based on the invention stage and the need for clients. The provisional patent specification is mainly drafted to describe the invention for the invention's initial stage andsecure the invention's priority date. No patent is granted based on the provisional patent specification. On the other hand, a non-provisional specification is drafted with patent claims for the invention ready to launch on the market. The non-provisional specification has to be drafted within 12 months from the date of provisional patent filing Filing of a patent Application for a patent can be filed only on the payment of a full fee The filing fee is charged based on the number of pages and the number of claims made in the patent document. No extra fee is charged up to 30 pages and ten claims. Power of attorney if applicable. Application, Specification and other documents should be either in Hindi or English language If application discloses sequence listing of nucleotides and amino acids, it should be filed in electronic form There is only one application filed for one invention. This must be done in a prescribed form along with the prescribed fees in the appropriate patent office. It should be accompanied by a provisional or a complete specification
  • 29. 29 A specification is an accurate description of the patent stating how the invention can be carried out by the method best known to the applicant. The specification ends with a claim or claims defining the scope of the invention for which protection is claimed. Every application must be accompanied by a provisional or a complete specification. • It is possible to apply with provisional specifications. However, it is necessary to file the complete specifications within one year of filing the original patent application. • The twelve-month limit can be extended to 15 months if an application is made to the Controller with such request and the prescribed fee is paid. How to file a patent application in India One can file the Patent application in the Indian Patent Office in two ways: a. Online Patent filing : also known as online Patent registration, the Indian Patent Office’s Electronic Patent filing application isan e-service portal. b. Offline Patent filing : Apart from performing Patent filing online, one can also file a Patent through the offline method, where one needs to submit hard copies to the respective Patent Office. However, filing an offline Patent Application is 10 % more compared to the official fee of the online patent registration mode. Indian Patent office has a Patent filing application a web portal, that provides Patent filing online facility for interaction, communication, and transaction between the Patent office and the stake holder, service facilitates user-friendly and transparent system which covers comprehensive Patent filing online system, wherein, in addition to the online patent registration of new applications, subsequent online filing formalities can also be completed. What are the documents required to file a patent application in India? A piece of work that contains: Description of the invention Drawings necessary to understand the invention One or more claims An abstract The name(s) of the inventor(s) Corresponding foreign applications, if applicable.
  • 30. 30 Parts of the patent document 1.Request for grant of application (application form): title of the invention name, address of the patent agent name, address of the inventor filing date priority date publication number and date application number international patent classification 2.Specifications: Disclosure of the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Description of a related art Field of invention Background of invention 3.Claims: define the matter for which protection is sought. To understand claims, contact the patent agent. 4.Abstract: a concise summary of the disclosure of the information 5.Drawings: illustration to show every feature of the invention and may consist of several views Patent specification The specification, which is also called the disclosure, is a written description of an invention. The patent specification is drafted both to satisfy the written requirements for patentability and define the scope of the claims. While the layout of a specification varies from place to place, it is relatively consistent between the U.S. and Europe, except that B and C are unique to the U.S. For this tutorial, the claims are described separately from the specification. The sections of a patent specification are: A. Title of the invention. The title of the invention is designed to describe the essence of the invention in a few words. B. Cross-reference to related applications. In the U.S., it is required that a patent application include a section titled cross-reference to related applications. In this section, the applicant lists any provisional patent applications claiming priority, or if the application is a continuation, the patent application number(s).
  • 31. 31 C. Statement regarding federally sponsored research (if applicable). In the U.S., it is also required that the applicant include a statement regarding federally sponsored research if the invention was made under a government contract or if federal grant money was used to fund the research. D. Background of the invention. The background of the invention is typically drafted for a jury audience. Selected art in the field is discussed to emphasize differences with the current invention and point needed improvements provided by the current invention. E. Summary of the invention. The summary of the invention, which is distinct from the abstract, is meant to discuss the invention (i.e., the claims) rather than the disclosure as a whole. Often, the summary will discuss the advantages of the invention or how it solves the problems existing in the art, such as those presented in the background of the invention. F. Description of the drawings. If drawings are included in the application, a brief description of each drawing is required. G. Detailed description of the invention. The detailed description of the invention is the meatiest section of a patent. Its purpose is to adequately and accurately describe the invention. There are generally two sections:  A general explanation of the invention and how to practice it. The invention is described in its broadest sense to show that the inventors have a broad view of the scope of the elements. Often, preferred embodiments of the invention are described. Such embodiments are generally more limited versions of the broadest concept and are provided to support a fallback position of narrower claims if the broader concept is not patentable. Definitions of key terms are often provided and are extremely important in interpreting the scope of the claims.  Specific examples of how to practice the invention. A patent application does not require examples. However, in practice, examples can often assist in showing patentability (e.g., enablement). The examples may or may not have been performed by the inventors. Working examples present completed undertakings. Prophetic examples are hypothetical undertakings and are always written in the present or future tense. Typically, the examples demonstrate a practice of one or more specific embodiments of the invention. H. Sequence listing. A sequence listing is required if the application includes nucleic acid or amino acid sequences. If sequences are disclosed, every nucleic acid molecule that is at least ten nucleotides, and every protein that is at least four amino acids, must be included. In many jurisdictions, sequence listings are required to be in a specific text format. The USPTO provides a free software download called Patent. which is often used to compile sequence listings. Patent claims.
  • 32. 32 The claims are the essential part of a patent. The goal of the claims is to point out particularly and distinctly claim the subject matter which the applicant regards as his or her invention. There must be at least one claim in a patent, and the reasoning is that possible infringers must understand what is and is not protected based on the claims. Parts of a Claim A claim is generally presented in three parts, the preamble, a transitional phrase (or word), and the body. Preamble The preamble is an introductory statement that names the invention that is to be claimed. For example, A method for making a genetically modified plant. Transitional Phrase The transitional phrase (or word) specifies whether the claim is limited to only the elements listed or whether the claim may cover items or processes with additional elements. Commonly used transitional phrases include comprisingand consisting of. See also Transitional Language in Patent Claims for a more in-depth description of transitional phrases. Body, The body of a claim lists the elements (also referred to as limitations) or steps of the named invention. Claims may be independent or dependent. Independent Claims An independent claim defines an operative, complete invention by itself, without referring to or including limitations of other claims. Independent claims intend to broadly cover all embodiments of the invention without reading on prior art.Dependent Claims Dependent claims refer back to and further defines an invention recited in another claim. In doing so, a dependent claim includes all of the limitations of the claim to which it refers. Dependent claims are often used to define the scope of the elements in an independent claim and are written to protect specific embodiments of an invention. Should a court find that the main independent claim was wrongly granted, a dependent claim may still be valid and is used as a "fallback position"., Dependent claims also make it easier for a jury to determine whether infringement as occurred if the infringing activity is spelt out in a claim rather than just inferred. Management of IP assets (IPAs) is collections of intellectual properties – patents, trademarks, copyrighted works, industrial designs, geographical indications, and trade secrets strategically chosen for their business value. IP assets have economic value because of their ability to enhance the value and financial return from technologies, products and services. The development and management of intellectual property have become a primary concern of private enterprises, especially in the fast-growing technology and cultural industries. The field of Intellectual Asset Management – sometimes called IAM, has become a professional discipline taught by business schools and offered as a service by accounting, consulting and law firms. IP assets, when properly managed, can: motivate and help generate revenues from product sales and licensing royalties; increase high-value exports. Attract high-value foreign direct investment (FDI) and joint ventures. Help retain and motivate technical personnel. Stimulate research and development (R&D) based industries and create employment; support educational and research institutions. Enhance corporate valuation.
  • 33. 33 Promote funding for R&D, which provides and enhances needed technologies and products. Provide bargaining power in technology transfer negotiations. Help to gain access to goods and technologies through licensing agreements. IP portfolio management Portfolio management is an essential facet of IP management. During an IP audit, the review of an IP portfolio provides an opportunity to identify IP assets whose value has become insignificant or markedly decreased. IP valuation helps in budgeting and resource allocation decisions. A bloated portfolio ties up capital and management time in underperforming assets. In many instances, value is added by selling, licensing or termination of these assets. It is necessary to consider whether poor performance is the result of bad management or weak IP. Misjudgement can result in a handover of value to a shrewd purchaser. Several private equity firms in Europe specialize in reviving underperforming brands. THE MACROECONOMIC IMPACT OF THE PATENT SYSTEM A. Introduction A patent is a set of exclusive rights granted by a sovereign state to an inventor or assignee for a limited time in exchange for detailed public disclosure of an invention. The patent system's role in economic growth received greater attention in the recent past, especially after the Apple, Samsung case. The patent system is designed in such a way as to encourage innovation. By conferring rights on the owner to exclude competitors from the market, patents offer the incentive for people to study new technology. In some fields, particularly pharmaceuticals, it is also argued that the monopoly of the patent in the market allows the owner to recover the huge expenses invested in the research and development phase3. Technology and knowledge are essential factors for economic growth and development. Patents are legal instruments intended to encourage innovation by providing a limited monopoly to the inventor (or their assignee) in return for the disclosure of the invention. By offering exclusive rights for a limited period, an inventor may recover R&D costs and investments. It also promotes investment to commercialize and market new inventions so that the general public can enjoy the fruit of the innovation. Further, the system is designed to disseminate knowledge and information to the public by publishing patent applications and granted patents. Therefore, allowing the ideas to become public and forming breeding grounds for creating many more new and valuable inventions through the dissemination of the knowledge included in the published invention. B. Relationship between the patent system and economic growth. The patent system has an impact on the economy as a whole. The surrounding economics group of patents or a single patent revolves around the balance between the expense of maintaining the patents, and the income derived from owning those patents C. Patents & free and fair market competition A patent is an exclusive right enjoyed by the inventor to exclude others from commercially exploiting the invention for a limited period. However, in order to get Patent rights, the
  • 34. 34 inventor shall disclose the invention. Thus disclosure of the invention is an essential consideration in any patent granting procedure. The balance between the interest of patent holders and that of the public has recently been discussed a lot in the light of competition policy because the right to exclude others particularly referred to as monopoly. The aims and objectives of patent and competition policy may seem prima facie as odds. However, both competition policy and patent law are complementary, as both aim to encourage innovation and competition. Patent rights are not legal monopolies froma competition law perspective. They do not necessarily confer monopoly power on patent rights holders. Most countries adopted a market system, where free and fair competition between the enterprises are allowed within limits defined by law. Such competitions are considered the best means of satisfying the demand-supply chain and thereby protecting the consumer interest and the economy. However, when there is competition, the possibility of unfair practices are high. Patent holders may deploy their rights improperly to the detriment of competition and technological progress by forming a cartel and suppressing competition in associated markets or alternative technologies to raise the entry barriers. Such practices will be having a direct detrimental impact on the economy as well as the consumer interest. Rules on the prevention of restrictive trade practices as well as on prevention of unfair competition interrelated as both aims at ensuring an efficient operation of the market. However, fair play in the market cannot be ensured only by the protection of industrialproperties. Therefore, it is necessary to supplement the laws on industrial property. This can be done by preparing competition law flexible, and the protection thereunder must be independent of any formality such as registration. In order to maintain fair competition within the market, competition policy prohibits such restrictive trade practices as well as agreements that restrict fair competition in the market. Hence, the interplay between competition policy and the patent law ensures innovation by keeping away abuse of dominant powers, maintaining fair competition and improving consumer welfare. D. Patent policies and economic growth The policymakers have recognized the importance of Patents and the needs for specific policies for patents during the early 1990. As a result, policymakers recognized the role of the patent system as an important element of the institutional infrastructure, thereby encouraging private investment in the Research & Development (R &R&D) sector. Patents as a private and intangible good prevent competition based on free-riding and support innovation-based competitions through limited monopoly and the public good through innovation disclosure. Therefore, we can say that the patent system offers a proper balance between two extreme policies viz. private good and the public good. Besides accelerating the growth in innovation, patents also assist in determining the directions of technical change, thereby leading to adopting necessary patent policies in countries with no such practices. E. Economic impact of patents The scope of patent protection is regularly assumed to be much broader than determined by law. It is then no wonder that the assumption that intellectual property rights in general and patents, in particular, confer an economic monopoly on their owner is considered by Kitch to be one of the elementary but persistently repeated errors in economic analysis. The economic importance of patents is rapidly increasing. However, visible and demonstrable evidence of economic payoff attributable to intellectual property (IP) protection (including patent
  • 35. 35 protection) is currently not sufficiently widespread. It is always difficult to analyze the role of the patent system in the economic development process due to the complexities in separating or desegregating the effects of IP protection from other factors that impact the developing economies. The role of patents in economic development is likely to be case-specific, in the context of both variations from industry to industry and variations among countries. Effects of patents on a given market may vary widely according to the type of market and whether there are other barriers to entry. Even in socialist monopole economies, the adherence to international patent laws was or becomes strict, as the effect is reciprocal for the public economy, as soon as the level of technology development in these economies creates a comparative advantage. However, since patents essentially encourage innovation by giving owners the right to monopolize the market for a limited time, the public will suffer from patents that are not innovative by paying a higher cost. Patent offices in India The head office for Patent Administration in India is in Kolkata. Patent offices have 4 four branches based on territorial jurisdictions: MUMBAI- The States of Maharashtra, Gujarat, Madhya Pradesh, Goa and Chhattisgarh and the Union Territories of Daman and Diu & Dadra and Nagar Haveli. CHENNAI- The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and Lakshadweep. NEW DELHI- The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi and the Union Territory of Chandigarh. KOLKATA- The rest of India.
  • 36. 36 COMPULSORY LICENCING Patentable drugs are not available to the public at a reasonably affordable price is one of the grounds of granting compulsory licencing. It is permission granted by the government in the aspect of public interest to a non-patentee to manufacture a patented product. It is given in a national emergency, extremely important, during covid like pandemics. Compulsory licenses are sovereign state authorizations that enable a third party to make, use, or sell a patented product without the patent holder's consent. Provisions about compulsory licensing are provided for under both the Indian Patent Act, 1970, and the international legal agreement between all the member nations of WTO – the TRIPS. In India. Under Section 84(1) of the Indian Patent Act, 1970, after three years from the grant of a patent, any interested person may make an application for a compulsory license because the patented invention: (a) Does not satisfy the reasonable requirements of the public; (b) Is not available to the public at a reasonably affordable price; and (c) Is not worked in the territory of India. In addition to the grounds mentioned above, according to Section 92 of the Act, compulsory licenses can also be issued suomotu by the Controller of Patents according to a notification issued by the Central Government if there is either a “national emergency” or “extreme urgency” or in cases of “public non-commercial use”. The said section enables the Government of India to notify to the public of such extreme circumstances, whereupon, any person interested can apply for a compulsory license, and the Controller in such case may grant to the applicant a license over the patent on such terms and conditions as he thinks fit. The patentee, however, has the right to be heard in the compulsory licensing application process. India’s first-ever compulsory license was granted by the Patent Office on March 9, 2012, to Hyderabad-based Natco Pharma for the production of a generic version of Bayer’s Nexavar, an anti-cancer agent used in the treatment of liver and kidney cancer. In the Bayer vs Natco case, it was established that only 2% of the cancer patient population had easy access to the drug and that Bayer was selling the drug at an exorbitant price of 2.8 lakh INR for a month treatment. Further, on the ground that Nexavar was being imported within the territory of India, the IPO issued a compulsory license to Natco Pharma, which assured that the tablets would be sold for Rs. 8,880/- per month. It was settled that 6% of the net sales of the drug would be paid to Bayer by Natco Pharma as royalty. In the second case of Compulsory licensing in India, the Controller rejected the BDR Pharmaceuticals application for compulsory license (made on March 4, 2013) for the BMS cancer drug, SPRYCEL. The Controller rejected the compulsory license application made by BDR for stating that BDR has failed to make a prima facie case to make an order under section 87 of the Act. The controller in the said case observed
  • 37. 37 that BDR Pharmaceuticals had not made any credible attempt to procure a voluntary license from the Patent holder, and the applicant has also not acquired the ability to work the invention to the public advantage. In India's most recent case of compulsory licensing, Lee Pharma, a Hyderabad based Indian pharma company, filed an application for compulsory license (dated 29.06.2015) for the patent covering AstraZeneca’s diabetes management drug Saxagliptin. In order to make a prima facie case, Lee Pharma strived to show that their negotiations for a voluntary license with the patent owner were not rewarding as they did not receive any response from the Patent owner within a reasonable period. The grounds alleged by Lee Pharma were that:  the patentee has failed to meet the reasonable requirements of the public,  the patented invention is not available to the public at a reasonably affordable price, and  the patented invention is not worked in India. However, all three grounds of Lee Pharma were rejected by the Controller General, and the Compulsory license application was refused. The application was rejected because Lee Pharma failed to demonstrate the reasonable requirement of the public with respect to Saxagliptin and further failed to demonstrate the comparative requirement of the drug Saxagliptin vis-a-vis other drugs are also DPP-4 inhibitors. Further, Controller General held that all the DPP-4 inhibitors were in the same price bracket and the allegation that Saxagliptin alone was being sold at an unaffordable price was unjustified. The Controller General also stated that Lee Pharma failed to show the exact number of patients being prescribed the patented drug. How many of them were unable to obtain it due to its non-availability. Consequently, it was challenging to hold whether manufacturing in India was necessary or not. PATENT COOPERATION TREATY (PCT) The advantage of PCT is the Simplification of paperwork. It has reduced cost and reduction in time for obtaining protection for an invention throughout out the world PCT offers advantages to applicants by giving sufficient time to access the market potential of their patents in different countries. India is a signatory to PCT and is a member country. Nearly 150 countries are in PCT, and your rights exist in the entire world for 2.5 years The Patent Cooperation Treaty (PCT) assists applicants in seeking patent protection internationally for their inventions, helps patent Offices with their patent granting decisions and facilitates public access to a wealth of technical information relating to those inventions. By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in 150 countries
  • 38. 38 throughout the world. The PCT makes it possible to seek patent protection for an invention simultaneously in many countries by filing a single internationalpatent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent Offices in what is called the national phase. Advantages The PCT System has many advantages for an applicant, for the patent Offices and the general public: (a) An applicant has up to 18 months more than if he had not used the PCT to reflect on the desirability of seeking protection in foreign countries, to appoint local patent agents in each foreign country, to prepare the necessary translations and to pay the national fees; (b) If an international application is in the form prescribed by the PCT, it cannot be rejected on formal grounds by any PCT Contracting State patent Office during the national phase of the processing of the application; (c) The international search report and written opinion contain essential information about the potential patentability of your invention, providing a solid basis for you to make business decisions about how to proceed;3 (d) There is also a possibility that during the optional international preliminary examination, the international application be amended, and then entered into dialogue with the examiner to argue the case thoroughly and put the application in order before processing by the various national patent offices; (e) The search and examination work of patent offices in the national phase can be considerably reduced thanks to the international search report, the written opinion and, where applicable, the international preliminary report on patentability that accompany the international application; (f) Applicants are also able to fast-track examination procedures in the national phase in Contracting States that have PCT-Patent Prosecution Highway (PCT- PPH)agreements or similar arrangements; (g) Since each international application is published together with an international search report, third parties are in a better position to evaluate the potential patentability of the claimed invention; (h) For an applicant, international publication online puts the world on notice of their invention. Such an applicant may also highlight their interest in concluding licensing agreements on PATENTSCOPE, which can be an effective means of advertising and looking for potential licensees; (i) Applicants also achieve other savings in document preparation, communication and translations because the work done during the international processing is generally not repeated before each Office (for example, he may submit only one copy of the priority document instead of having to submit several copies); and
  • 39. 39 (j) If an invention appears to be not patentable at the end of the international phase, the applicant may abandon the PCT application and will have saved the costs he would otherwise have incurred by directly seeking protection in foreign countries, appointing local patent agents in each foreign country, preparing the necessary translations and paying the national fees. Ultimately, the PCT: – brings the world within reach; – streamlines the process of fulfilling diverse formality requirements; – postpones the significant costs associated with seeking international patent protection; – provides a solid basis to patenting decisions; and – is used by the world’s major corporations, research institutions and universities when they seek international patent protection. Conditions for grant of a (valid) patent: A patent application must be filed The invention must be new (novel) and involve an inventive step (non-obvious) The invention must be industrially applicable The application must fully describe the invention sufficiently to enable the performance of the invention. The application must define the patent rights sought in patent claims that are somewhat based on what is described PCT System deals with patents under two main phases: INTERNATIONAL PHASE It starts with the filing of the PCT application. Involves many processes such as international search, international examination, international publication with regards to the laws of signatory countries before the national phase. The search, examination and publication done at this stage need not be repeated for every other country during the national phase. The countries that the application is to be filed rely on such an international report, thus reducing the time required for the patent to be registered. NATIONAL PHASE It falls at 30 months from the filing date of the international application or the earliest priority date of the application if a priority is claimed. In the national phase, the patent application is subject to each country's patent laws, regulations, and practices.
  • 40. 40 Rejections on form and content may not be raised provided that they conform to the requirements of the PCT. For example, A person resides in India. He has invented a unique device that he wants many countries to benefit from. He can file for a patent at the PCT Regional Office in his country. Once the international phase of his application is over, he can start the process to register his patent under the national phase. During the national phase, he has to individually file for registrations in countries that he wants to register. What happens to my application in the national phase? Once you have entered the national phase, the national or regional patent Offices concerned begin determining whether they will grant you a patent. Any examination which these Offices may undertake should be made more accessible by the PCT international search report and the written opinion and even more by an international preliminary examination report. How do I enter the national phase? Whether you use an earlier-filed patent application to support priority for the filing of the PCT Application (as discussed above), or you file an international application without a previous direct filing, you will ultimately need to enter into what is called the national phase in every country where you wish to ultimately obtain a patent. It is only after you have decided whether, and in respect of which States, you wish to proceed further with your international application that you must fulfil the requirements for entry into the national phase. These requirements include paying national fees and, in some cases, filing translations of the application. These steps must be taken, in relation to the majority of PCT Contracting States’ patent Offices, before the end of the 30th month from the priority date. There may also be other requirements in connection with the entry into the national phase – for example, the appointment of local agents. What are the costs associated with the filing and processing of an international application under the PCT? What are the costs for entering the national phase? PCT applicants generally pay three types of fees when they file their international applications: a. an international filing fee of 1,330 Swiss francs, b. a search fee which can vary from approximately 150 to 2,000 Swiss francs depending on the ISA chosen, and c. a small transmittal fee which varies depending on the receiving Office. For example, to file a patent in India, the cost to be incurred is as follows: a. International filing fee of 1,363 USD b. The search fee of 2,500 INR c. A transmittal fee of 17,600 INR
  • 41. 41 PCT flow chart In what languages can an international patent application be filed? An international patent application can be file in any language which the receiving Office accepts. Suppose you file your application in a language that the ISA does not accept to carry out the international search. In that case, you will be required to furnish a translation of the application for an international search. Receiving Offices are, however, obliged to accept filings in at least one language, which is both a language accepted by the competent ISA that is to carry out the international search and a publication language, that is, one of the languages in which international patent applications are published (Arabic, Chinese,English,French,German, Japanese, Korean, Portuguese, Russian and Spanish).Therefore always have the option of filing your international patent application in at least one language from which no translation is required for either PCT international search or publication purposes. What is a PCT international search? A PCT international search is a high-quality search of the relevant patent documents and other technical literature in those languages in which most patent applications are filed (Chinese, English, German and Japanese, and in some instances, French, Korean, Russian and Spanish). The high quality of the search is assured by the standards prescribed in the PCT for the documentation to be consulted and by the qualified staff and uniform search methods of the ISAs, all experienced patent Offices. The results are published in an international search report and a written opinion of the ISA on the potential patentability of your invention. The PCT Contracting States has appointed the following as International Searching Authorities (ISAs): The national Offices of ● Australia, ● Austria, ● Brazil, ● Canada, ● China, ● Chile, ● Egypt, ● Finland, ● India, ● Israel, ● Japan, ● the Republic of Korea, ● the Russian Federation, ● Spain, ● Sweden, ● Ukraine, ● the